DCT
1:23-cv-01825
Hanover Prest-Paving Co. v. Eterno Ivica S.R.L.
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: HANOVER PREST-PAVING CO. t/a HANOVER ARCHITECTURAL PRODUCTS (Pennsylvania)
- Defendant: Eterno Ivica SRL. (Italy)
- Plaintiff’s Counsel: Barley Snyder
- Case Identification: HANOVER PREST-PAVING CO. v. Eterno Ivica SRL., 1:23-cv-01825, M.D. Pa., 11/02/2023
- Venue Allegations: Venue is alleged to be proper based on Defendant’s advertising and sale of products within the Commonwealth of Pennsylvania, which gives rise to the action.
- Core Dispute: Plaintiff alleges that Defendant’s paver pedestal system infringes three U.S. patents related to adjustable pedestals and stabilizing systems for constructing elevated decks.
- Technical Context: The technology concerns adjustable support systems used to create level, elevated surfaces for pavers or tiles, commonly used for rooftop patios, plazas, and terraces.
- Key Procedural History: The complaint alleges that Defendant has been on notice of the patents-in-suit and its alleged infringement since at least July 2023, based on correspondence from Plaintiff’s counsel. This allegation forms the basis for the willfulness claim.
Case Timeline
| Date | Event |
|---|---|
| 2006-11-02 | Earliest Priority Date for ’059, ’461, and ’805 Patents |
| 2011-04-05 | U.S. Patent No. 7,918,059 Issued |
| 2013-02-26 | U.S. Patent No. 8,381,461 Issued |
| 2013-05-14 | U.S. Patent No. 8,438,805 Issued |
| 2023-07-XX | Plaintiff allegedly sent correspondence to Defendant identifying patents and infringement |
| 2023-11-02 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,438,805 - "Pedestal for Ballast Block Decking," Issued May 14, 2013
The Invention Explained
- Problem Addressed: The patent background describes a need for stable, readily adjustable pedestals for elevated deck systems that can support pavers or ballast blocks. Such systems should also permit proper drainage and enable the installation of bracing. (’059 Patent, col. 1:31-39, incorporated by reference into the ’805 patent prosecution history).
- The Patented Solution: The invention is a pedestal for supporting pavers that includes a support plate with a recessed "fitting section" designed to hold a "sound-deadening pad." The pad and the support plate are physically connected by a "boss and recess connection arrangement" that creates a "self locking connection," ensuring the pad is "non-movable" relative to the support plate to prevent slippage and dampen noise. (’805 Patent, Abstract; col. 3:11-26).
- Technical Importance: This design provides a secure and integrated sound-dampening feature, which can enhance the stability and acoustic properties of an elevated decking system. (’805 Patent, col.2:60-65).
Key Claims at a Glance
- The complaint asserts independent claims 1, 9, 11, 13, and 14 (Compl. ¶16).
- Independent Claim 1 includes these primary elements:
- A support with a support plate having upstanding walls to define quadrants and a recessed "fitting section."
- A "sound-deadening pad" that is "wholly positioned and secured" in the fitting section and is "non-movable" to prevent relative movement.
- A "boss and recess connection arrangement" between the plate and pad that cooperates to provide a "self locking connection."
- Independent Claims 9, 11, 13, and 14 claim similar structures but with variations, such as reciting a "coating" instead of a "pad" (Claim 9), requiring the pad to extend above the support plate surface (Claim 13), or adding a base and height adjustment member (Claim 14).
U.S. Patent No. 7,918,059 - "Pedestal for Ballast Block Decking," Issued April 5, 2011
The Invention Explained
- Problem Addressed: As with the ’805 patent, the technology targets the need for stable and adjustable pedestals for constructing elevated surfaces like rooftop decks. (’059 Patent, col. 1:31-39).
- The Patented Solution: This invention focuses on the structural and bracing features of the pedestal assembly. It describes a multi-part pedestal comprising a base, an adjustable support, and an optional height-adjusting coupler. The key features are specifically placed "eyelets" for securing bracing: a "first eyelet" is located in a "reinforcement wall" on the base, and a plurality of "second eyelets" are located on a flange of the coupler, facilitating the attachment of bracing wires between adjacent pedestals. (’059 Patent, Abstract; col. 4:15-28).
- Technical Importance: The defined locations for bracing eyelets allow for the creation of a rigid, interconnected grid of pedestals, which improves the overall stability of the deck system, particularly for taller installations or systems subject to lateral forces. (’059 Patent, col. 4:46-55).
Key Claims at a Glance
- The complaint asserts independent claims 1, 7, and 9 (Compl. ¶28).
- Independent Claim 1 includes these primary elements:
- A base with a plate and a post.
- A "reinforcement wall" between the plate and post, having a "first eyelet" located at a corner where the post and wall interconnect.
- An adjustable support for the pavers.
- An adjustable "coupler" located between the support and base.
- A "flange" extending circumferentially about the coupler, with a plurality of "spaced-apart second eyelets" extending through it.
- Independent Claim 7 is a system claim requiring a plurality of the pedestals from Claim 1 connected by "wire bracing."
- Independent Claim 9 adds limitations for a "hollow post" and "drainage openings" in the base that are in communication with the first eyelet.
Multi-Patent Capsule: U.S. Patent No. 8,381,461
- Patent Identification: U.S. Patent No. 8,381,461, "Stabilizing Systems for Deck Pedestals," Issued February 26, 2013.
- Technology Synopsis: This patent addresses the need to minimize movement in height-adjustable pedestal systems by restraining the relative movement between pedestals. (’461 Patent, col. 1:31-38). The invention is a stabilizing system comprising multiple pedestals, connection locations on the pedestals, and at least one "stabilizing member" (such as a bar or wire) secured between the connection locations of at least two pedestals. (’461 Patent, Abstract).
- Asserted Claims: Claims 1 through 16 are asserted, which includes independent claims 1 and 16 (Compl. ¶37).
- Accused Features: The complaint alleges that the accused pedestal products meet the support plate limitations and that "Eterno may provide a stabilizing member as required in each of independent claims 1 and 16." (Compl. ¶36).
III. The Accused Instrumentality
- Product Identification: The accused instrumentality is identified as "a paver pedestal system that provides rigid support for pavers," which is referred to as the "Infringing Product." (Compl. ¶13).
- Functionality and Market Context: The complaint alleges the Infringing Product is manufactured and sold by Defendant Eterno and has been offered for sale and sold within the United States. (Compl. ¶13-14). The complaint references Exhibit A, which is alleged to show the infringing paver pedestal system (Compl. ¶13). The complaint does not provide further technical details about the structure or operation of the accused system, instead making conclusory allegations that it embodies the claimed inventions.
IV. Analysis of Infringement Allegations
The complaint does not provide claim charts or detailed infringement contentions. It recites the language of the independent claims and makes a conclusory statement that the accused product infringes.
’805 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a support including a support plate having an upper major surface with a plurality of upstanding walls extending upward from the upper major surface thereof to define quadrants on the support plate for receiving a section of the blocks, pavers, tiles, or panels and a fitting section recessed from the upper major surface and extending into the support plate; | The complaint alleges the Infringing Product includes a support with these features. | ¶18 | col. 4:37-46 |
| a sound-deadening pad wholly positioned and secured in the fitting section between the plurality of upstanding walls...the pad being non-movable within the support to prevent any relative movement between the support plate and the pad; | The complaint alleges the Infringing Product includes a pad with these features and functional properties. | ¶18 | col. 4:47-56 |
| wherein the support plate and the pad are connected by a boss and recess connection arrangement there between such that the boss and recess connection arrangement cooperate to provide a self locking connection. | The complaint alleges the Infringing Product includes a connecting arrangement with this structure and function. | ¶18 | col. 4:57-61 |
’059 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a base at a lower end thereof having a plate extending outward from a post; | The complaint alleges the Infringing Product includes a base with these features. | ¶30 | col. 5:41-43 |
| a reinforcement wall extending between the plate and the post and having a first eyelet formed therein, the first eyelet is located at a corner where the post interconnects with the reinforcement wall; | The complaint alleges the Infringing Product includes a reinforcement wall and eyelet with this structure and location. | ¶30 | col. 5:44-48 |
| a support at an upper end thereof for supporting the blocks, pavers, tiles, or panels thereon, the support being adjustably mounted relative to the base for altering an overall height of the pedestal; | The complaint alleges the Infringing Product includes an adjustable support. | ¶30 | col. 5:49-53 |
| a coupler being adjustably located between the support and the base for further altering the overall height of the pedestal; | The complaint alleges the Infringing Product includes an adjustable coupler. | ¶30 | col. 5:54-57 |
| a flange that extends circumferentially about the coupler; and, a plurality of spaced-apart second eyelets extending through the flange. | The complaint alleges the Infringing Product includes a flanged coupler with eyelets. | ¶30 | col. 5:58-62 |
- Identified Points of Contention:
- Evidentiary Questions: The complaint's infringement allegations are conclusory and do not map specific features of the accused product to claim limitations. A central issue will be whether Plaintiff can produce evidence in discovery to substantiate these allegations for each structural and functional element of the asserted claims.
- Technical Questions (’805 Patent): The infringement analysis will likely focus on whether the accused product contains a "pad" that is truly "non-movable" and whether its connection mechanism meets the specific functional requirement of a "self locking connection."
- Scope Questions (’059 Patent): A potential dispute may arise over whether the accused product's base includes a structure that qualifies as a "reinforcement wall" with a "first eyelet" as defined by the patent, or if it uses a different form of structural support.
V. Key Claim Terms for Construction
Term 1 (’805 Patent): "self locking connection" (Claim 1)
- Context and Importance: This term defines the required function of the connection between the support plate and the pad. Its construction is critical because infringement will depend on whether the accused product's connection method achieves this specific function, as opposed to a simple friction or press-fit.
- Intrinsic Evidence for a Broader Interpretation: The specification provides an example of a "snap-fit connection" created by cooperating bosses and recesses, which a party could argue suggests "self locking" encompasses any connection that mechanically resists separation without requiring external fasteners. (’805 Patent, col. 3:23-25).
- Intrinsic Evidence for a Narrower Interpretation: A party could argue that the term, read in light of the claim's requirement that the pad be "non-movable," implies a more robust interlock that prevents any and all relative movement, not just separation. The claim states the "boss and recess connection arrangement cooperate to provide" this function, suggesting it is an inherent result of the specified structure. (’805 Patent, col. 4:57-61).
Term 2 (’059 Patent): "reinforcement wall" (Claim 1)
- Context and Importance: This term defines a key structural element of the pedestal base where the first bracing eyelet is located. The infringement analysis for the ’059 patent hinges on whether the accused product possesses a structure that meets this definition.
- Intrinsic Evidence for a Broader Interpretation: A party might argue that any structural gusset, rib, or fin extending between the central post and the outer plate of the base for the purpose of strengthening it constitutes a "reinforcement wall."
- Intrinsic Evidence for a Narrower Interpretation: The specification describes these as walls that "extend radially-from an exterior of the post" and are "spaced-apart circumferentially about the post." (’059 Patent, col. 4:32-36). A party could argue the term is limited to the distinct, separate wall structures depicted in the patent's figures (e.g., Fig. 1, element 66), rather than encompassing any form of integrated structural ribbing.
VI. Other Allegations
- Indirect Infringement: The complaint makes a general allegation of contributory and induced infringement but does not plead specific facts to support the required elements of knowledge and intent, such as referencing defendant's specific instructions, user manuals, or advertising that would encourage infringing acts. (Compl. ¶47).
- Willful Infringement: Willfulness is alleged based on Defendant’s purported pre-suit knowledge of the patents and infringement, stemming from correspondence sent by Plaintiff’s counsel in July 2023. (Compl. ¶38, ¶48). The complaint alleges that Defendant continued its conduct despite this notice, asserting this continuation constitutes a conscious disregard of Plaintiff's patent rights. (Compl. ¶40, ¶42).
VII. Analyst’s Conclusion: Key Questions for the Case
This case appears to present three central questions for the court's consideration:
Evidentiary Sufficiency: Can the plaintiff, through discovery, produce evidence to support its currently conclusory allegations? The initial complaint lacks specific factual support linking the accused product's features to the detailed structural and functional requirements of the asserted claims, making the development of the factual record a primary challenge.
Claim Construction and Technical Scope: The dispute may turn on questions of definitional scope. For the ’805 patent, a key issue will be functional: what degree of connection security is required to meet the "self locking connection" limitation? For the ’059 patent, the issue may be structural: does the accused product's base possess a distinct "reinforcement wall" as described and depicted in the patent, or merely a functionally similar but structurally different form of ribbing?
System-Level Infringement: For the ’461 patent, a significant question will be whether infringement of the full system can be proven. The allegation that the defendant merely "may provide a stabilizing member" (Compl. ¶36) raises doubts about whether the plaintiff can demonstrate that the defendant makes, uses, offers to sell, or sells the complete claimed "stabilizing system," which requires the presence of that member.