DCT
2:25-cv-00547
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-00547, E.D. Pa., 04/08/2025
- Venue Allegations: Venue is alleged to be proper as Defendant, a Pennsylvania company, has transacted business and committed the alleged acts of infringement within the Eastern District of Pennsylvania.
- Core Dispute: Plaintiff alleges that Defendant indirectly infringes two patents related to adhesive dispensing systems by selling its "Premium V-Manifold Applicator," which is allegedly designed and intended to be modified by third parties to operate in an infringing manner.
- Technical Context: The technology concerns systems and methods for applying two-component adhesives in the commercial roofing and construction industry, focusing on a low-pressure aerated spray technique.
- Key Procedural History: The complaint alleges a history of communications with a third-party modifier of Defendant's products, Black Cat, Inc. Plaintiff alleges it notified Black Cat of infringement of a related patent in January 2022, determined that Black Cat's systems infringed the '820 Patent in March 2023, and sent a cease-and-desist letter regarding the '858 Patent in August 2024. The complaint alleges Defendant was aware of these activities, which may be relevant to the claims of inducement and willfulness.
Case Timeline
| Date | Event |
|---|---|
| 2017-07-19 | Earliest Priority Date for '858 and '820 Patents |
| 2022-01-18 | Plaintiff allegedly notified third-party Black Cat of infringement of a related patent |
| 2023-01-24 | U.S. Patent No. 11,559,820 Issued |
| 2023-03-XX | Plaintiff allegedly determined Black Cat's systems infringed the '820 Patent |
| 2024-05-28 | U.S. Patent No. 11,992,858 Issued |
| 2024-08-XX | Plaintiff allegedly sent cease-and-desist 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 describes drawbacks of conventional adhesive application methods. High-pressure spray systems are expensive and create difficult-to-control "atomized droplets" that contaminate surrounding areas. Low-pressure bead systems, while more controlled, result in non-uniform adhesive coverage and may not meet certain construction requirements ('858 Patent, col. 1:35-62).
- The Patented Solution: The invention is a method and system featuring a two-stage pressurization process. Adhesive components are first pressurized by a pump and then injected with pressurized air before they are mixed and dispensed ('858 Patent, col. 2:5-14). This creates a "low-pressure aerated spray," which is alleged to provide uniform coverage like a high-pressure spray but with better control and less overspray, overcoming the limitations of prior art systems (Compl. ¶10). The system also describes using pressurized air to purge the lines after use to prevent blockages ('858 Patent, col. 7:35-49).
- Technical Importance: This approach seeks to combine the benefits of different application types—the uniform coverage of a spray with the control of a bead—to efficiently meet construction industry standards for adhesive strength, such as wind uplift resistance (Compl. ¶10).
Key Claims at a Glance
- The complaint asserts independent claims 1, 5, and 10 (Compl. ¶¶21, 24).
- Independent Claim 1 outlines a method for dispensing fluids, comprising the steps of:
- Providing a dispensing head with separate passages and a mixing tip.
- Providing an adhesive component or adhesive in the mixing tip.
- Providing pressurized air to the mixing tip passage upstream of its outlet.
- Dispensing the fluid from the mixing tip outlet.
- Independent Claim 5 adds the explicit step of "aerating" at least one of the adhesive components in the mixing tip passage.
- Independent Claim 10 describes a more comprehensive method from storage to application, including the step of "aerating" an adhesive component in the mixing tip passage.
U.S. Patent No. 11,559,820 - Adhesive Dispensing System and Method
Issued January 24, 2023
The Invention Explained
- Problem Addressed: The '820 Patent addresses the same technical problems as its continuation, the '858 Patent: the overspray and high cost of high-pressure systems versus the non-uniform application of bead systems ('820 Patent, col. 1:39-64).
- The Patented Solution: The patent describes a system where two-component adhesives are pressurized by a pump and then further aerated by injecting pressurized air into the separate fluid streams before they are combined in a mixing tip ('820 Patent, Abstract; col. 2:16-22). This two-stage pressurization allows for application as either a bead or a "low-pressure aerated spray." The patent asserts that this process results in a cured adhesive with an improved, finer cell structure compared to adhesives applied by prior art systems ('820 Patent, col. 7:25-36).
- Technical Importance: The invention claims to offer greater operational flexibility (bead or spray) and improved material characteristics in the final cured adhesive, while reducing equipment costs and contamination associated with conventional methods (Compl. ¶14).
Key Claims at a Glance
- The complaint asserts independent claims 1, 13, and 23 (Compl. ¶¶22, 31).
- Independent Claim 1 outlines a method for dispensing first and second adhesive components, comprising the steps of:
- Providing first and second adhesive components in separate storage containers.
- Providing a dispensing head with separate passages and a mixing tip.
- Flowing the components from the containers, through the head passages, and to the mixing tip.
- Aerating at least one of the components upstream of the mixing tip passage outlet.
- Mixing the components to form an adhesive.
- Dispensing the adhesive.
- Independent Claim 13 outlines a similar method focusing on the flow through the dispensing head and the step of aerating a component "upstream of said mixing tip passage outlet."
- Independent Claim 23 describes a method of aerating a component "at or upstream of said first head passage outlet."
III. The Accused Instrumentality
Product Identification
The accused product is Defendant’s "Premium V-Manifold Applicator" (Compl. ¶9). The infringement allegations center on the use of this product when it is "modified by third parties such as Black Cat" to create a complete dispensing system (Compl. ¶9).
Functionality and Market Context
The complaint alleges that when modified, the accused product operates as an adhesive dispensing system that utilizes a "dispensing head, connector lines, a mixing tip, and an air purge system" (Compl. ¶9). The core accused functionality is a method of "aerating adhesive components upstream of the mixing tip to ensure optimal adhesive application" (Compl. ¶19). The complaint includes a photograph, attached as Exhibit C, of the accused "Premium V-Manifold Applicator" to illustrate the product at issue (Compl. ¶9). The product is allegedly advertised on Defendant's website (Compl. ¶9).
IV. Analysis of Infringement Allegations
The complaint references claim chart exhibits (Ex. D, E) that were not provided with the filed complaint; therefore, the following analysis is based on the narrative allegations.
'858 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| (a) providing a dispensing head having a first head passage...and a second head passage... | The modified accused product allegedly operates using a "dispensing head" with separate fluid paths. | ¶9 | col. 4:5-7 |
| (b) providing a mixing tip having a mixing tip passage...in fluid communication with said...head passage outlet... | The modified accused product allegedly uses a "mixing tip." | ¶9 | col. 4:7-13 |
| (d) providing pressurized air to said mixing tip passage upstream of said mixing tip passage outlet; | Third parties allegedly modify the product to perform a method of "aerating adhesive components upstream of the mixing tip." This is alleged to be the introduction of pressurized air. | ¶19, ¶20 | col. 4:15-22 |
| (e) dispensing said...fluid or adhesive from said mixing tip passage outlet... | The modified product is allegedly used to dispense multi-component adhesives. | ¶10 | col. 4:13-15 |
'820 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| (c) providing a dispensing head having a first head passage...and a second head passage... | The modified accused product allegedly operates using a "dispensing head." | ¶9 | col. 8:3-9 |
| (f) providing a mixing tip having a mixing tip passage... | The modified accused product allegedly incorporates a "mixing tip." | ¶9 | col. 8:14-20 |
| (g) flowing said first adhesive component fluid...to said first head passage and to said mixing tip passage; | The system allegedly directs a first adhesive component through the apparatus. | ¶9, ¶13 | col. 8:21-25 |
| (i) aerating at least one of said first adhesive component fluid or said second adhesive component fluid upstream of said mixing tip passage outlet; | The complaint alleges that third-party modifications include a "method of aerating adhesive components upstream of the mixing tip." | ¶19 | col. 8:29-32 |
Identified Points of Contention
- Scope Questions: The case is founded on a theory of indirect infringement. A central question will be whether the "Premium V-Manifold Applicator," as sold by Defendant, is a staple article of commerce with substantial non-infringing uses, or if it is a material part of the patented invention known by Defendant to be especially made or adapted for an infringing use.
- Technical Questions: The complaint alleges that third-party modifications result in an infringing system. The court will likely need to examine the specific nature of those modifications to determine if they practice the claimed "aerating" step—which involves introducing pressurized air to the separate fluid components prior to their combination in the mixing tip—in the manner required by the claims.
V. Key Claim Terms for Construction
The Term: "aerating"
(e.g., ’820 Patent, Claim 1(i))
- Context and Importance: This term is the technological core of the asserted claims. Its construction will be critical to determining infringement. Practitioners may focus on whether "aerating" simply means introducing any amount of air, or if it requires achieving the specific technical results described in the specification.
- Intrinsic Evidence for a Broader Interpretation: The plain and ordinary meaning of "aerate" could be construed broadly as simply introducing air or gas into a liquid.
- Intrinsic Evidence for a Narrower Interpretation: The specification suggests a more specific function, stating that injected air "aerates the adhesives, introducing air bubbles into the adhesives as well as additionally pressuring the adhesives" to enable a "low-pressure aerated spray application" ('820 Patent, col. 2:22-26). This could support a narrower construction requiring that the aeration achieve both bubbling and additional pressurization for a specific purpose.
The Term: "upstream of said mixing tip passage outlet"
(e.g., ’820 Patent, Claim 1(i))
- Context and Importance: The location of aeration is a key distinguishing feature of the invention. The infringement analysis may turn on the precise point where the third-party modification introduces pressurized air into the system.
- Intrinsic Evidence for a Broader Interpretation: Parties could argue this means any point in the fluid path before the adhesive exits the system's final nozzle.
- Intrinsic Evidence for a Narrower Interpretation: The patent figures and description show air being introduced into the main dispensing head before the separate adhesive components enter the disposable mixing tip ('820 Patent, Fig. 1; col. 4:36-45). This may support a construction limiting the location of aeration to a point within the non-disposable dispensing head, prior to where the fluids enter the separate mixing tip component.
VI. Other Allegations
Indirect Infringement
The complaint's central theory is induced infringement under 35 U.S.C. § 271(b). It alleges Defendant sells the Premium V-Manifold Applicator "with the knowledge and intent that third parties, such as Black Cat, modify the Asserted Product to infringe" (Compl. ¶18). The basis for knowledge includes Defendant's alleged awareness of Plaintiff's prior infringement notices to Black Cat (Compl. ¶¶19, 20, 24, 31).
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). This suggests a theory of willfulness based on both pre-suit and post-suit knowledge of the alleged infringement.
VII. Analyst’s Conclusion: Key Questions for the Case
- A primary question for the court will be one of induced infringement: does the evidence show that Defendant sold its "Premium V-Manifold Applicator" not merely with knowledge of how it might be used, but with the specific intent to encourage third parties to modify it in a way that directly infringes the patents-in-suit?
- A key technical question will be one of claim scope: does the term "aerating," as defined by the patent's intrinsic evidence, require a specific two-stage pressurization process that achieves a "low-pressure aerated spray," or can it be construed more broadly to cover any introduction of air into the adhesive streams before they are mixed and dispensed?
- An essential evidentiary question will be the nexus between Defendant and third-party conduct: what specific facts link Defendant's awareness of its patents and Black Cat's activities to an affirmative intent to induce infringement, as opposed to mere knowledge of a customer's independent actions?