4C's Spray Equipment Rental LLC v. Rooftop Equipment Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: 4C's Spray Equipment Rental, LLC (Pennsylvania)
  • Defendant: Rooftop Equipment, Inc. (Pennsylvania)
  • Plaintiff’s Counsel: BARLEY SNYDER LLP
• Case Identification: 2:25-cv-01799, E.D. Pa., 04/08/2025
• Venue Allegations: Venue is alleged to be proper because Defendant has transacted business and committed acts of infringement within the Eastern District of Pennsylvania.
• Core Dispute: Plaintiff alleges that Defendant’s Premium V-Manifold Applicator indirectly infringes patents related to two-component adhesive dispensing systems that use pressurized air to aerate adhesive components before application.
• Technical Context: The technology concerns systems for applying multi-component adhesives in the commercial roofing and construction industries, seeking to provide the uniform coverage of spray systems with the control and lower cost of bead systems.
• Key Procedural History: The complaint alleges that Defendant knew of the infringing use of its product by third parties. This allegation is based on Plaintiff's prior communications with at least one of those third parties, including a cease-and-desist letter regarding one of the patents-in-suit. This history forms the basis for the complaint's claims of induced and willful infringement.

Case Timeline

Date	Event
2017-07-19	'858 and '820 Patents Priority Date
2022-01-18	Plaintiff notifies third-party modifier (Black Cat) of infringement of a related patent
2023-01-24	'820 Patent Issue Date
2023-03-XX	Plaintiff alleges it determined that modified systems infringed the '820 Patent
2024-05-28	'858 Patent Issue Date
2024-08-XX	Plaintiff issues cease-and-desist letter to Black Cat regarding the '858 Patent
2025-04-08	Complaint Filing Date

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

U.S. Patent No. 11,992,858 - "Adhesive Dispensing System and Method" (Issued May 28, 2024)

The Invention Explained

• Problem Addressed: The patent's background describes the drawbacks of conventional adhesive application methods. High-pressure spray systems require expensive, high-maintenance pumps and create atomized droplets that can contaminate non-target areas, while lower-pressure bead systems fail to provide uniform adhesive coverage. (’858 Patent, col. 1:34-53).
• The Patented Solution: The invention is a system and method employing a "two-stage pressurization" process. First, a proportioning pump pressurizes two adhesive components. Second, pressurized air is injected into the fluid streams to "additionally pressurize and aerate the adhesives before mixing and dispensing." (’858 Patent, Abstract; col. 2:6-13). This allows for application as either a bead or a controlled, "low-pressure aerated spray," and also facilitates air purging to prevent blockages. (’858 Patent, col. 2:17-24, 51-56).
• Technical Importance: This approach is presented as a method to achieve the uniform coverage needed to meet construction requirements, such as wind uplift resistance, without the high cost and contamination issues associated with traditional high-pressure spray systems. (’858 Patent, col. 1:30-33; col. 2:37-51).

Key Claims at a Glance

• The complaint asserts independent claims 1, 5, and 10. (Compl. ¶24).
• Independent Claim 5 includes the following essential elements for a method of dispensing adhesive fluids:
  • Providing a dispensing head with separate first and second head passages.
  • Providing a mixing tip in fluid communication with the head passages.
  • Providing a first or second adhesive component fluid in the respective head passage or an adhesive formed by mixing them in the mixing tip.
  • Aerating at least one of the adhesive fluids or the mixed adhesive in the mixing tip passage.
  • Dispensing the adhesive from the mixing tip passage outlet.
• The complaint reserves the right to assert additional claims.

U.S. Patent No. 11,559,820 - "Adhesive Dispensing System and Method" (Issued Jan. 24, 2023)

The Invention Explained

• Problem Addressed: The patent identifies the same technical problems as the ’858 Patent: the expense, overspray, and contamination of high-pressure spray systems, and the non-uniform application of bead systems. (’820 Patent, col. 1:34-68).
• The Patented Solution: The invention is a method for dispensing adhesives that involves injecting pressurized air into the component fluid streams "to achieve aeration before mixing." (’820 Patent, col. 2:55-57). This aeration is described as creating a "low-pressure aerated spray" with a "spattering" or "splattering" characteristic, which improves mixing and results in a cured adhesive with a finer, more uniform cell structure. (’820 Patent, col. 2:32-37; col. 6:29-37).
• Technical Importance: The technology is positioned as providing an improved method for uniformly applying adhesives to meet construction standards, such as wind uplift resistance, while mitigating the need for respiratory equipment and costly protective barriers required for high-pressure systems. (’820 Patent, col. 2:38-48).

Key Claims at a Glance

• The complaint asserts independent claims 1, 13, and 23. (Compl. ¶31).
• Independent Claim 1 includes the following essential elements for a method of dispensing adhesive fluids:
  • Providing first and second adhesive components in separate storage containers.
  • Providing a dispensing head with two separate head passages.
  • Providing connector lines from the containers to the head passages.
  • Providing a mixing tip joined to the outlets of the head passages.
  • Flowing the first and second adhesive components to the mixing tip.
  • Aerating at least one of the adhesive components "upstream of said mixing tip passage outlet."
  • Mixing the components within the mixing tip to form an adhesive.
  • Dispensing the adhesive from the mixing tip.
• The complaint reserves the right to assert additional claims.

III. The Accused Instrumentality

• Product Identification: Defendant’s "Premium V-Manifold Applicator." (Compl. ¶9).
• Functionality and Market Context: The complaint alleges that the Premium V--Manifold Applicator is a component "designed and intended to be modified by third parties" for use in multi-component adhesive dispensing systems. (Compl. ¶9). When modified, the resulting system is alleged to operate using a "dispensing head, connector lines, a mixing tip, and an air purge system" to practice the patented methods. (Compl. ¶9). The core of the infringement allegation is not that the applicator itself is a complete infringing device, but that Defendant sells it with the knowledge and intent that it will be incorporated into a larger, infringing system. (Compl. ¶18). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint references claim-chart exhibits (Exhibits D and E) that are not provided; therefore, the narrative infringement theory is summarized below. (Compl. ¶¶ 21-22).

The complaint’s central theory is one of indirect infringement by inducement. It alleges that Defendant sells its Premium V-Manifold Applicator with the knowledge and specific intent that its customers, such as Black Cat, will combine it with other components (e.g., pumps, hoses, mixing tips) to create adhesive dispensing systems that practice the methods claimed in the ’858 and ’820 patents. (Compl. ¶¶ 18, 24, 31).

The allegedly infringing act is the use of the modified systems to perform the patented methods, which centrally involve "aerating" one or more adhesive components by introducing pressurized air into the fluid passages upstream of or within the mixing tip. (Compl. ¶¶ 10, 14). The complaint alleges that the complete, modified systems meet every limitation of the asserted claims. (Compl. ¶¶ 25, 32).

• Identified Points of Contention:
  • Scope Questions: A principal issue will be whether Defendant’s conduct meets the legal standard for inducement. The dispute will likely focus on whether Defendant sold its applicator with the specific intent to encourage infringement, or if the applicator is a staple article of commerce with substantial non-infringing uses.
  • Technical Questions: A factual question is whether the modified systems perform "aerating" as claimed in the patents. The complaint references an "air purge system" as part of the modified apparatus. (Compl. ¶9). The patents, however, describe both "aerating" for application and "air purging" to clear lines after use as distinct functions. (’820 Patent, col. 2:21-26; col. 7:45-54). The case may turn on evidence showing whether the introduction of air in the accused method is for creating a low-pressure aerated spray during application or for the separate, potentially non-infringing, purpose of purging.

V. Key Claim Terms for Construction

• The Term: "aerating"

• Context and Importance: This term is the core of the asserted claims in both patents. Its construction will be critical to determining whether the function performed by the accused modified systems falls within the scope of the claims.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The specification describes the step as "injecting the adhesives with preselected amounts of pressurized air" and "introducing air bubbles into the adhesives." (’820 Patent, col. 2:19-23). This language could support an interpretation that covers any introduction of air into the fluid stream before dispensing.
  • Evidence for a Narrower Interpretation: The patent distinguishes "aerating" from creating an "atomized" high-pressure spray and from a simple "bead." It describes the result as a "low-pressure aerated spray" that provides a "'spattering' or 'splattering' application" and yields a cured adhesive with an "improved, smaller and finer cell structure." (’820 Patent, col. 2:32-37, col. 6:30-32). Practitioners may argue that "aerating" must be construed to require this specific type of application and resulting adhesive structure, not merely the presence of air in the line.

• The Term: "upstream of said mixing tip passage outlet" (from ’820 Patent, Claim 1)

• Context and Importance: This limitation defines the location where the claimed "aerating" must occur. The infringement analysis will depend on where, precisely, air is introduced in the accused method.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: This phrase could be argued to encompass any point in the system before the mixed adhesive exits the final nozzle, providing a wide geographical scope.
  • Evidence for a Narrower Interpretation: The patent figures and description show air being introduced into dedicated passages within the dispensing head itself, which then feed into the separate mixing tip. (’820 Patent, Fig. 1; col. 4:35-45). A party could argue that the term should be limited to the specific embodiments where aeration occurs in the dispensing head immediately before, but not within, the mixing tip passage.

VI. Other Allegations

• Indirect Infringement: The complaint alleges inducement to infringe under 35 U.S.C. § 271(b). (Compl. ¶¶ 24, 31). The factual allegations supporting this claim include Defendant’s sale of the Premium V-Manifold Applicator with alleged knowledge of its customers' infringing modifications and with the intent to encourage such infringing use. (Compl. ¶¶ 18-20).
• Willful Infringement: Willfulness is alleged based on Defendant’s continued sale of the accused product "after becoming aware of 4C's Patents and the infringing modifications by third parties." (Compl. ¶¶ 27, 34). The complaint ties this awareness to communications Plaintiff had with a third-party modifier, Black Cat, including notice regarding a related patent in 2022 and a cease-and-desist letter regarding the ’858 Patent in 2024. (Compl. ¶¶ 19-20).

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

• A central issue will be one of intent for inducement: can the Plaintiff prove that the Defendant, which sells a component rather than the complete system, possessed the specific intent to encourage its customers to infringe the patents-in-suit? The outcome may depend on evidence of Defendant's knowledge of its customers' specific product modifications and its awareness of the patents themselves.
• A key evidentiary question will be one of functional distinction: does the introduction of air in the accused method perform the specific function of "aerating" the adhesive to create a low-pressure spray as claimed in the patents, or is its purpose a potentially non-infringing one, such as purging the lines after use?
• A third question will concern the substantial non-infringing use doctrine: is the accused Premium V-Manifold Applicator a staple article of commerce suitable for a variety of non-infringing applications, or is it a material part of the invention specifically designed for use in an infringing manner with no other substantial uses?