DCT

2:19-cv-01676

L Neal Black v. Black Barnes LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:19-cv-01676, D.S.C., 06/11/2019
  • Venue Allegations: Venue is alleged to be proper as the defendants reside in and the defendant company conducts business within the judicial district.
  • Core Dispute: Plaintiff, a named co-inventor, seeks a declaratory judgment that a family of patents related to pile guides for docks are valid against alleged challenges to inventorship from his co-inventor, and further seeks to resolve ownership disputes over the patents and the associated company.
  • Technical Context: The technology concerns pile guides, which are devices that connect floating docks to stationary pilings, allowing docks to rise and fall with water levels while remaining horizontally stable.
  • Key Procedural History: The complaint alleges that Plaintiff Black and Defendant Barnes co-invented the patents-in-suit and assigned them to a jointly-formed company, Black & Barnes LLC. The complaint further alleges that a subsequent dispute over company management and ownership led Barnes to challenge Black's status as a co-inventor, thereby casting a "shadow of invalidity" upon the patents and creating a justiciable controversy.

Case Timeline

Date Event
2017-03-14 Earliest Priority Date for all Patents-in-Suit
2018-06-11 Defendant Black & Barnes LLC Organized
2018-08-06 Patents Assigned to Black & Barnes LLC
2018-08-28 U.S. Design Patent No. D826,702 Issued
2018-09-18 U.S. Design Patent No. D828,746 Issued
2018-09-18 U.S. Design Patent No. D828,747 Issued
2019-01-01 U.S. Design Patent No. D837,041 Issued
2019-04-23 U.S. Patent No. 10,267,003 Issued
2019-06-11 Complaint Filed

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

U.S. Patent No. 10,267,003 - "Pile Guide"

  • Patent Identification: U.S. Patent No. 10,267,003, "Pile Guide," issued April 23, 2019.

The Invention Explained

  • Problem Addressed: The patent's background section notes that conventional metal pile guides for floating docks often have "inadequate service lives" due to corrosion and environmental wear, particularly in saltwater applications (’003 Patent, col. 1:21-27).
  • The Patented Solution: The invention is a pile guide fabricated entirely from high-density polyethylene (HDPE). It consists of a central collar, which slides over the dock pile, connected to a planar flange that mounts to the dock ('003 Patent, Abstract; col. 3:7-10). The HDPE material is described as extremely strong, abrasion-resistant, and having a low coefficient of friction, which allows the guide to glide easily on the pile during tidal changes with minimal wear ('003 Patent, col. 3:10-22).
  • Technical Importance: The use of HDPE as the sole material for the pile guide directly addresses the durability and corrosion problems associated with traditional metal guides, offering a potentially longer-lasting and lower-maintenance solution for mooring floating docks ('003 Patent, col. 3:7-19).

Key Claims at a Glance

  • The complaint seeks a declaratory judgment of validity for the patent as a whole, rather than asserting specific claims. The broadest independent claim is Claim 1.
  • Essential elements of Independent Claim 1 include:
    • A pile guide comprising a flange and a collar.
    • The collar has an opening to receive a fixed pile.
    • The collar is positioned within and surrounded by the flange.
    • The flange extends outwardly from the sides of the collar.
    • The collar and flange are formed as separate parts.
    • The collar is held in a void in the flange by a weld.
    • The entire pile guide is "formed entirely of high density polyethylene."

U.S. Design Patent No. D828,746 - "External Pile Guide for Dock Corners"

  • Patent Identification: U.S. Design Patent No. D828,746, "External Pile Guide for Dock Corners," issued September 18, 2018.

The Invention Explained

  • Problem Addressed: Not applicable. Design patents protect ornamental appearance, not functional solutions.
  • The Patented Solution: The patent protects the specific, non-functional, ornamental design of an "external pile guide for dock corners" as depicted in its figures (’746 Patent, Claim). The design features a cylindrical collar extending through a flange with a rounded top edge and a flat bottom edge, from which a V-shaped member extends downward to engage a dock corner.

Key Claims at a Glance

  • Design patents contain a single claim.
  • The claim is for "The ornamental design for an external pile guide for dock corners, as shown and described" ('746 Patent, Claim).

U.S. Design Patent No. D828,747 - "External Pile Guide for Docks"

  • Patent Identification: U.S. Design Patent No. D828,747, "External Pile Guide for Docks," issued September 18, 2018.
  • Technology Synopsis: This patent protects the ornamental design for an external pile guide. The claimed design consists of a collar and an attached flange with a rounded top edge and a flat bottom edge, intended for mounting to a dock via L-shaped brackets (which are shown in broken lines and do not form part of the claimed design) (’747 Patent, FIG. 2, Description).
  • Asserted Claims: The single claim is for "The ornamental design for an external pile guide for docks, as shown and described" ('747 Patent, Claim).
  • Accused Features: The complaint places the patent's validity and inventorship in dispute (Compl. ¶¶ 1, 30, 34).

U.S. Design Patent No. D837,041 - "Internal Pile Guide for Docks"

  • Patent Identification: U.S. Design Patent No. D837,041, "Internal Pile Guide for Docks," issued January 1, 2019.
  • Technology Synopsis: This patent protects the ornamental design for an internal pile guide. The design consists of a simple, unadorned cylindrical collar that extends both above and below a flat, square flange (’041 Patent, FIG. 1, FIG. 4).
  • Asserted Claims: The single claim is for "The ornamental design for an internal pile guide for docks, as shown and described" ('041 Patent, Claim).
  • Accused Features: The complaint places the patent's validity and inventorship in dispute (Compl. ¶¶ 1, 30, 34).

U.S. Design Patent No. D826,702 - "Pile Guide for Docks for Internal Application"

  • Patent Identification: U.S. Design Patent No. D826,702, "Pile Guide for Docks for Internal Application," issued August 28, 2018.
  • Technology Synopsis: This patent protects the ornamental design for an internal pile guide. The design features a cylindrical collar extending through a square flange, with the addition of triangular gussets that connect the top surface of the flange to the upper portion of the collar (’702 Patent, FIG. 1).
  • Asserted Claims: The single claim is for "The ornamental design for a pile guide for docks for internal application, as shown and described" ('702 Patent, Claim).
  • Accused Features: The complaint places the patent's validity and inventorship in dispute (Compl. ¶¶ 1, 30, 34).

No probative visual evidence provided in complaint.

III. The Accused Instrumentality

This section is not applicable as the complaint is for a declaratory judgment of patent validity and to resolve an ownership dispute, and does not allege infringement by an accused instrumentality.

IV. Analysis of Infringement Allegations

This section is not applicable as the complaint does not contain allegations of patent infringement.

V. Key Claim Terms for Construction

This section is not applicable as the central dispute raised in the complaint concerns inventorship and ownership, not claim construction for the purpose of an infringement analysis.

VI. Other Allegations

The complaint contains three primary causes of action that are not related to infringement:

  • Declaratory Judgment of Patent Validity and Proper Inventorship: Plaintiff seeks a judicial declaration that he is a properly named co-inventor on the patents-in-suit and that the patents are therefore valid under 35 U.S.C. § 256 (Compl. ¶¶ 29-34). This cause of action is predicated on Defendant Barnes's alleged statements that Plaintiff Black "played no role in inventing" and was not a co-inventor, which Plaintiff argues creates an "immediate, definite, and concrete dispute" over patent validity (Compl. ¶¶ 26, 33).
  • Re-assignment of the Patents: Plaintiff seeks to have the court find the patent assignment to Defendant Black & Barnes LLC void ab initio, or alternatively order the re-assignment of the patents back to the individual inventors (Compl. ¶¶ 35-40). The basis for this claim is an allegation of fraud or failure of consideration, stemming from alleged "false, misleading pretenses" by Defendant Barnes that the inventors would share equally in the business (Compl. ¶¶ 36, 38).
  • Dissolution of the Company: Plaintiff seeks a court order to dissolve or reorganize Black & Barnes LLC (Compl. ¶¶ 41-46). This claim is based on allegations that Defendant Barnes violated duties of loyalty and good faith, engaged in self-dealing, and "oppressively managed the Company" (Compl. ¶¶ 23, 42-43).

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

The resolution of this case appears to hinge on factual and legal questions outside of a typical patent infringement analysis. The central issues for the court will likely be:

  • A primary factual question will be one of inventorship: did Plaintiff Black's alleged contributions to the "essential features of the claimed inventions" rise to the level of co-inventorship under U.S. patent law, or were the patented designs conceived solely by Defendant Barnes?
  • A core issue will be one of corporate and contract law: is the 2018 assignment of the patents to the LLC legally void due to the alleged fraud or failure of consideration, and do the allegations of oppressive management and breach of fiduciary duty warrant the judicial dissolution of the company?
  • A threshold legal question may be one of jurisdiction: do Defendant Barnes's alleged statements challenging Plaintiff's inventorship create an "actual and immediate" controversy sufficient to give the court declaratory judgment jurisdiction over the issue of patent validity?