DCT
2:24-cv-05494
Black Cat Inc v. 4C's Spray Equipment Rental LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Black Cat Inc. d/b/a Panther East (Pennsylvania)
- Defendant: 4C's Spray Equipment Rental, LLC (Pennsylvania)
- Plaintiff’s Counsel: Panitch Schwarze Belisario & Nadel LLP
- Case Identification: 2:24-cv-05494, E.D. Pa., 10/16/2024
- Venue Allegations: Venue is asserted as proper in the Eastern District of Pennsylvania on the basis that a substantial portion of the Plaintiff's alleged infringement occurs in the district.
- Core Dispute: Plaintiff seeks a declaratory judgment that its adhesive-dispensing products do not infringe two of the Defendant's patents, and/or that the patents are invalid.
- Technical Context: The technology concerns systems for dispensing two-component adhesives, such as those used in commercial roofing, by aerating the components to create a low-pressure spray.
- Key Procedural History: The complaint was filed in response to cease-and-desist letters from the Defendant. A March 2023 letter accused the Plaintiff of infringing the '820 Patent. After the Plaintiff denied infringement, the Defendant sent an August 2024 letter reasserting its claims and adding allegations of infringement of the recently issued '858 Patent, expressly providing notice for the purpose of seeking enhanced damages.
Case Timeline
| Date | Event |
|---|---|
| 2017-07-19 | Priority Date for '820 and '858 Patents |
| 2023-01-24 | U.S. Patent No. 11,559,820 Issued |
| 2023-03-10 | Defendant sends first cease-and-desist letter re: '820 Patent |
| 2023-03-31 | Plaintiff responds, denying infringement and asserting invalidity |
| 2024-05-28 | U.S. Patent No. 11,992,858 Issued |
| 2024-08-23 | Defendant sends second cease-and-desist letter re: '820 and '858 Patents |
| 2024-10-16 | Complaint for Declaratory Judgment Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,559,820 - "Adhesive Dispensing System and Method" (issued Jan. 24, 2023)
The Invention Explained
- Problem Addressed: The patent describes drawbacks of existing two-part adhesive applicators. High-pressure systems create fine, atomized droplets that are difficult to control and can lead to contamination of non-target areas, while low-pressure "bead" applicators fail to provide uniform adhesive coverage over a work surface (U.S. Patent No. 11,559,820, col. 1:45-2:6). Additionally, mixed adhesive components can harden and create blockages in the equipment ('820 Patent, col. 2:7-11).
- The Patented Solution: The invention is a system and method where pressurized air is injected into the two separate adhesive component fluid streams before they are combined in a disposable mixing tip ('820 Patent, col. 2:18-26). This "aeration" of the unmixed components creates a low-pressure "spattering" or "splattering" application, which provides more uniform coverage than a bead without the overspray issues of high-pressure atomization ('820 Patent, col. 2:30-39). This pre-mixing aeration is also described as improving the chemical reaction and final cured structure of the adhesive ('820 Patent, col. 6:29-37).
- Technical Importance: The described technology aims to provide the uniform coverage necessary for demanding applications like commercial roofing, but without the expense, control problems, and respiratory hazards associated with conventional high-pressure sprayers ('820 Patent, col. 2:42-48).
Key Claims at a Glance
- The complaint challenges independent claims 1 and 13.
- Independent Claim 1 (Method) includes the following essential elements:
- Providing first and second adhesive component fluids.
- Providing a dispensing head with separate first and second head passages.
- Providing a mixing tip where the head passages join.
- Flowing the first and second component fluids through their respective passages to the mixing tip.
- Aerating at least one of the component fluids upstream of the mixing tip passage outlet.
- Mixing the fluids within the mixing tip to form an adhesive.
- Dispensing the adhesive.
- Independent Claim 13 (Method) includes similar essential elements:
- Providing a dispensing head with two separate fluid head passages and a mixing tip.
- Flowing a first component fluid into the first passage and a second component fluid into the second passage.
- Flowing both fluids to and into the mixing tip passage.
- Aerating at least one of the component fluids upstream of the mixing tip passage outlet.
- Mixing the fluids within the mixing tip.
- Dispensing the adhesive.
- The complaint states that various dependent claims are also not infringed and/or invalid (Compl. ¶¶ 29, 39).
U.S. Patent No. 11,992,858 - "Adhesive Dispensing System and Method" (issued May 28, 2024)
The Invention Explained
- Problem Addressed: As a continuation of the '820 Patent, the '858 Patent addresses the same technical problems of achieving uniform adhesive application without the drawbacks of high-pressure atomizing sprayers or low-pressure bead applicators (U.S. Patent No. 11,992,858, col. 1:32-2:2).
- The Patented Solution: The core technology is identical to that of the '820 Patent: a system that uses injected air to aerate adhesive components to enable a controlled, low-pressure spray ('858 Patent, Abstract; col. 2:9-20). The claims, however, introduce different phrasing and focus, with some claims directed at a method of purging the system with pressurized air ('858 Patent, Claim 1).
- Technical Importance: The technical importance is the same as for the parent '820 Patent, aiming to combine the benefits of spray and bead application methods ('858 Patent, col. 7:26-36).
Key Claims at a Glance
- The complaint challenges independent claims 1, 5, and 10.
- Independent Claim 1 (Method) includes the following essential elements:
- Providing a dispensing head and mixing tip.
- Providing one of three substances in the mixing tip: a first component fluid, a second component fluid, or a mixed adhesive.
- Providing pressurized air to the mixing tip upstream of the outlet.
- Dispensing the substance from the outlet until the first component fluid, the second component fluid, or the mixed adhesive no longer remains in the mixing tip passage.
- Independent Claim 5 (Method) includes the following essential elements:
- Providing a dispensing head and mixing tip.
- Providing adhesive component fluids in the head passages or mixed adhesive in the tip passage.
- Aerating one of the following: the first component fluid in the first head passage, the second component fluid in the second head passage, or the mixed adhesive in the mixing tip passage.
- Dispensing the adhesive.
- Independent Claim 10 (Method) includes similar elements to Claim 5, framed around flowing fluids from storage containers. It also requires the step of "aerating at least one of said first adhesive component fluid in said first head passage or said second adhesive component fluid in said second head passage or said adhesive in said mixing tip passage."
- The complaint asserts that various dependent claims are also not infringed and/or invalid (Compl. ¶44).
III. The Accused Instrumentality
Product Identification
- The complaint identifies a line of products collectively referred to as the "VEE AIR Products" (Compl. ¶13). Ten specific product names are listed, including various spray guns, applicators, tips, and complete sprayer systems (Compl. ¶18).
Functionality and Market Context
- The complaint, being a declaratory judgment action, focuses on the products' allegedly non-infringing functionality. The central technical assertion made by the Plaintiff is that its "VEE AIR products only aerate adhesive component fluids after they are combined with one another" (Compl. ¶38). The Plaintiff, Black Cat, is a distributor of these and other tools and equipment through its website (Compl. ¶¶ 8-9). No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
'820 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Plaintiff's Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| aerating at least one of said first adhesive component fluid or said second adhesive component fluid upstream of said mixing tip passage outlet | The VEE AIR products do not aerate the component fluids while they are separate. Instead, aeration allegedly occurs only after the fluids are combined. | ¶38 | col. 8:23-25 |
- Identified Points of Contention:
- Scope Question: A primary point of contention will be the construction of the phrase "upstream of said mixing tip passage outlet." The Plaintiff argues this requires aeration to occur while the component fluids are still in their separate passages within the dispensing head, before they combine in the mixing tip (Compl. ¶38). A counter-argument could be that any location physically prior to the final exit orifice, including within the mixing tip itself, qualifies as "upstream."
- Technical Question: The factual question is where, precisely, the VEE AIR products introduce air into the fluid stream. The outcome of the infringement analysis will depend on comparing this factual finding to the court's construction of the claim term. The Plaintiff also argues that the patent's specification consistently praises the benefits of aeration before mixing, which may be used to argue for a narrower claim scope limited to that embodiment (Compl. ¶33).
'858 Patent Infringement Allegations
| Claim Element (from Independent Claim 5) | Plaintiff's Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| aerating at least one of said first adhesive component fluid in said first head passage or said second adhesive component fluid in said second head passage or said first adhesive component fluid, said second adhesive component fluid or said adhesive in said mixing tip passage | The VEE AIR products allegedly do not aerate the fluids or adhesive in any of the locations specified by the claim. | ¶53 | col. 8:51-58 |
| Claim Element (from Independent Claim 1) | Plaintiff's Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| dispensing... until said first adhesive component no longer remains in said mixing tip passage, said second adhesive component fluid no longer remains in said mixing tip passage or said adhesive no longer remains in said mixing tip passage | The VEE AIR products allegedly do not perform this complete purging function as recited. | ¶52 | col. 8:9-15 |
- Identified Points of Contention:
- Infringement/Invalidity Squeeze: The language of claim 5 of the '858 Patent—"aerating... in said first head passage or said second head passage or said... adhesive in said mixing tip passage"—presents a potential "squeeze." The Plaintiff argues that its products do not infringe the '820 Patent because they only aerate after mixing. However, this claim in the '858 Patent appears to explicitly cover that scenario. In response, the Plaintiff alleges that if the claim is interpreted this broadly, it is invalid for lacking written description, because the patent specification only describes and enables aeration in the separate, pre-mixing passages (Compl. ¶47). This sets up a classic dispute where the claim is either too narrow to be infringed or too broad to be valid.
- Technical Question: For claim 1, a key factual issue will be whether the accused products have a purge cycle and, if so, whether it functions to clear all specified fluids and adhesives from the tip as required by the claim language (Compl. ¶52).
V. Key Claim Terms for Construction
For the '820 Patent:
- The Term: "aerating ... upstream of said mixing tip passage outlet"
- Context and Importance: The definition of this term is the linchpin of the non-infringement argument for the '820 Patent. Practitioners may focus on this term because if it is construed to mean "aerating the component fluids while they are still separate," as Plaintiff contends, and the accused products aerate only after mixing, there would be no literal infringement.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue the plain meaning of "upstream" refers to any point before the final exit, including within the mixing tip where fluids are already combining. The claim does not explicitly state the fluids must be separate during aeration.
- Evidence for a Narrower Interpretation: The specification repeatedly highlights the advantages of aerating before mixing (e.g., '820 Patent, col. 2:54-56, "injecting pressurized air into component fluids to achieve aeration before mixing improves mixing thoroughness"). Figures also depict air being introduced into separate passages prior to the mixing tip (e.g., '820 Patent, Fig. 1).
For the '858 Patent:
- The Term: "aerating at least one of said first adhesive component fluid in said first head passage or said second adhesive component fluid in said second head passage or ... said adhesive in said mixing tip passage"
- Context and Importance: This term is critical because of the infringement/invalidity squeeze it creates. The disjunctive "or" appears to broaden the claim to cover the very functionality Plaintiff argues is non-infringing under the '820 Patent. The construction will determine both the scope of infringement and the strength of the corresponding invalidity defense.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The plain language of the claim uses "or," which typically means any of the listed options is sufficient. This supports a finding of infringement if aeration occurs in the head passages OR in the mixing tip passage.
- Evidence for a Narrower Interpretation: Plaintiff argues the specification provides no examples or description of aeration occurring within the mixing tip passage itself; it only describes aeration in the separate head passages ('858 Patent, col. 4:30-33; Compl. ¶47). A court could potentially limit the claim scope to the embodiments actually described in the specification to preserve the claim's validity.
VI. Other Allegations
- Indirect Infringement: The Defendant's cease-and-desist letters accused the Plaintiff of direct and/or contributory infringement (Compl. ¶¶12, 17). The Plaintiff's complaint seeks a declaration of non-infringement "either directly or indirectly" (Compl. ¶25).
- Willful Infringement: The complaint states that the Defendant's August 23, 2024 letter was sent to provide "actual notice" of the '858 Patent, thereby establishing a basis for the Defendant to later seek enhanced damages for post-suit infringement (Compl. ¶21). This suggests the patentee is preparing to argue that any continued sales by the Plaintiff constitute willful infringement.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim scope versus validity, particularly for the '858 Patent. Can the term "aerating... in said mixing tip passage" be read broadly enough to cover the accused products' alleged operation, and if so, does the patent's specification provide adequate written description to support that breadth? This presents a potential squeeze play for the Plaintiff.
- A central question for the '820 Patent will be one of definitional timing and location: does the claim term "upstream of said mixing tip passage outlet" require aeration to occur before the two adhesive components combine, as shown in the patent's embodiments, or can it be read more broadly?
- The case will also turn on a key evidentiary question: a factual determination of how the accused VEE AIR products actually operate. The technical details of where and when air is introduced into the adhesive streams will be dispositive when measured against the court's final claim construction.