DCT
2:21-cv-01142
Dorneanu v. Graco Inc
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Daniel D Dorneanu (South Carolina)
- Defendant: Graco Inc. and Graco Minnesota Inc. (Minnesota)
- Plaintiff’s Counsel: Daniel D Dorneanu, Pro Se
- Case Identification: 2:21-cv-01142, D.S.C., 12/03/2021
- Venue Allegations: Plaintiff alleges venue is proper in the District of South Carolina because Defendant maintains agents in the district (e.g., Junction Crew in Greer, SC) which allegedly constitute a "regular and established place of business" where acts of infringement have occurred.
- Core Dispute: Plaintiff alleges that Defendant’s Reactor Connect product line for spray foam equipment infringes patents related to remote monitoring, control, and performance analysis of mobile spray foam rigs.
- Technical Context: The technology concerns systems that provide real-time data and remote control capabilities to operators of plural-component spray foam equipment, aiming to improve jobsite productivity and quality control.
- Key Procedural History: The complaint alleges a history of unsuccessful licensing discussions between the parties in 2017, followed by Defendant’s launch of the accused products. Plaintiff also alleges that Defendant engaged in tortious interference and violated a 2013 FTC consent order. The complaint further alleges that after learning of Plaintiff's technology, Defendant improperly amended its own pending patent application to add a new claim that allegedly lacks specification support.
Case Timeline
| Date | Event |
|---|---|
| 2017-02-27 | '980 Patent Priority Date |
| 2017-03-22 | '703 Patent Priority Date |
| 2017 (Early) | Plaintiff alleges Graco was informed of provisional applications |
| 2017-06 | Plaintiff's "JobSight" application offered for sale |
| 2017-10 | Plaintiff's "Sky" application offered for sale |
| 2018 | Defendant Graco offers "Reactor app" for sale |
| 2019 | Defendant Graco releases "Reactor Connect" application |
| 2019-09-24 | U.S. Patent No. 10,425,703 issues |
| 2019-10-01 | U.S. Patent No. 10,426,980 issues |
| 2021-04-05 | Plaintiff sends Cease and Desist letter to Defendant |
| 2021-12-03 | Amended Complaint filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,425,703 - "Remote Monitoring and Reporting for Mobile Plural Component Manufacturing Rigs"
- Patent Identification: U.S. Patent No. 10,425,703, "Remote Monitoring and Reporting for Mobile Plural Component Manufacturing Rigs," issued September 24, 2019. (Compl. ¶18).
The Invention Explained
- Problem Addressed: The patent’s background section describes that spray foam insulation is uniquely "manufactured on-site," yet rig crews often operate with "little data driven guidance" and are disconnected from operations management, leading to inefficiencies. (’703 Patent, col. 1:11-34). Existing monitoring tools are described as providing only raw data with significant time delays, requiring extra personnel to interpret. (’703 Patent, col. 2:38-52).
- The Patented Solution: The invention is a system that sends live data from a spray rig to a remote "support center server." This server processes the raw data using a "4 pillars of technology" framework (workday strategy, performance/efficiency, overall spray efficiency, and quality assurance) to provide optimized, actionable support back to the rig crew via a portable computer. (’703 Patent, Abstract; col. 2:56-65). The system is designed with a gateway to be compatible with equipment from various manufacturers. (’703 Patent, Fig. 4).
- Technical Importance: The system aims to convert a mobile spray rig into a connected "manufacturing facility," allowing for real-time optimization and potentially improving productivity by 15-20%. (’703 Patent, Abstract).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 4. (Compl. ¶¶47, 67).
- Independent Claim 1 requires: a "remote monitoring system" with a "portable computer" for receiving parameters from a "spray foam rig"; the computer has a "progress log" and "determines an amount of foam sprayed"; the computer "outputs... a progress of a job and an overall spray efficiency"; a "network" couples the computer to an "operations center" for remote monitoring.
- Independent Claim 4 depends on claim 1 and further requires: the portable computer receives a "rate of foam sprayed" and "determines a quality of foam being sprayed" from that rate and other parameters.
- The complaint does not explicitly reserve the right to assert dependent claims, but this is standard practice.
U.S. Patent No. 10,426,980 - "Smart Spray Foam Respirator Mask"
- Patent Identification: U.S. Patent No. 10,426,980, "Smart Spray Foam Respirator Mask," issued October 1, 2019. (Compl. ¶18).
The Invention Explained
- Problem Addressed: The patent’s background explains that spray foam applicators work in harsh environments, often hundreds of feet from the proportioner machine. To view or change equipment settings, they must stop work and walk back to the truck or use a radio, a process described as "very inefficient and time consuming." (’980 Patent, col. 1:18-38).
- The Patented Solution: The invention is a wireless communication system centered on a heads-up display (HUD) integrated into the applicator's respirator mask. This system allows the user to view and modify proportioner parameters (e.g., temperature, pressure) wirelessly at the "point of use," without interrupting the spraying process. (’980 Patent, Abstract; col. 1:38-45). The system architecture includes a gateway to interface with various proportioner brands and an access point on the rig for wireless connectivity. (’980 Patent, Fig. 4).
- Technical Importance: The technology is designed to give the applicator direct, on-demand control over the application process, aiming to improve productivity by 13-17%. (’980 Patent, Abstract).
Key Claims at a Glance
- The complaint asserts independent claim 1. (Compl. ¶75).
- Independent Claim 1 requires: a "local wireless communication system" comprising a) an "electronic processor" and "graphical user interface display" for viewing/modifying parameters; b) a "software application" allowing this viewing/modification to be done "from inside a smart spray foam respirator mask" using an "internal projection display" and "selector switch"; c) a "communication gateway"; d) an "access point" for IEEE 802.11 connectivity; and e) an "interface to an optical depth sensor" for 3D surface mapping.
III. The Accused Instrumentality
Product Identification
The accused instrumentality is Defendant's "Reactor Connect" product, which includes a mobile application ("Reactor App"), used either alone or in combination with Graco spray foam rig equipment. (Compl. ¶¶26, 38).
Functionality and Market Context
The Reactor Connect is described as a "mobile device application system" that allows users to remotely monitor and modify the operating parameters of spray equipment via a mobile device. (Compl. ¶38). The complaint provides a screenshot from Defendant's materials showing the accused product can generate reports on "Job, Material Usage, Productivity and Machine Utilization," and allows for monitoring of material ratios. (Compl. ¶¶55, 69; p. 19, Figure 3). This figure shows a "Reactor Connect Reports" screen with various report examples. (Compl. p. 19, Figure 3). The system also allegedly includes a remote "support center" where data from rigs is processed and analyzed. (Compl. ¶61). A visual in the complaint depicts a "support center person" analyzing data from a spray foam rig. (Compl. p. 22, Figure 5). The complaint positions Reactor Connect as a product launched after Plaintiff disclosed its technology to Defendant during unsuccessful licensing negotiations. (Compl. ¶¶29, 36).
IV. Analysis of Infringement Allegations
'703 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a spray foam remote monitoring system, comprising: a portable computer for receiving parameters from a spray foam rig... | The Reactor Connect system, including the Reactor App running on a mobile device, receives parameters from Graco spray foam equipment installed in a rig. The complaint includes an image of an operator in a spray foam rig to provide context. | ¶¶48, 50, 56; p. 16, Fig. 1 | col. 4:17-27 |
| wherein the portable computer outputs to a user of the rig a progress of a job and an overall spray efficiency... | The Reactor Connect app allegedly outputs "Reactor Daily" and "Summary" reports, which show job progress, and a "machine utilization" percentage, which is alleged to be the "overall spray efficiency." A screenshot from the accused system shows a "Machine Utilization" metric. | ¶¶50, 55; p. 19, Fig. 3 | col. 3:1-6 |
| a network coupled to the portable computer; and an operations center coupled to the network... | The system uses a cellular network to connect the mobile app to what the complaint alleges is Graco's "internal support center remote server" for monitoring and data processing. A provided image is alleged to show a support center person analyzing data. | ¶¶50, 60-61; p. 22, Fig. 5 | col. 4:28-34 |
| Claim Element (from Independent Claim 4) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| wherein the portable computer further receives from the rig a rate of foam sprayed and the portable computer determines a quality of foam being sprayed from the rate of foam sprayed and the parameters. | The Reactor Connect product allegedly monitors A and B material flow meters to allow for "quality monitoring for the user for material ratio viewing." The system's "Ratio Detail Report" and "Ratio Graph" features are identified as infringing this element. | ¶¶68-69; p. 19, Fig. 3 | col. 3:19-26 |
Identified Points of Contention
- Scope Questions: A central question may be whether the accused "machine utilization" feature meets the "overall spray efficiency" limitation. The complaint itself notes that the accused functionality is "not as comprehensive" as the patented "OSE" measurement, which the patent describes as a multi-factor calculation. (Compl. ¶55; ’703 Patent, col. 3:1-6). This raises the question of whether the scope of "overall spray efficiency" is broad enough to read on the accused feature.
- Technical Questions: The infringement theory for "determines a quality of foam" focuses on the accused product's ability to monitor the "material ratio." (Compl. ¶69). The patent, however, describes its "QAM" tool as calculating a material ratio and combining it with pressure and temperature data to evaluate if the chemical mix meets manufacturer specifications. (’703 Patent, col. 3:22-26). The court may need to determine if monitoring the material ratio alone is sufficient to meet this limitation.
'980 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a) an electronic processor and a graphical user interface display allowing for viewing and modification of operating parameters... | The Reactor Connect application running on a smartphone, which has a processor and a GUI. A screenshot of the accused app shows controls for adjusting temperature and pressure. | ¶¶76-77; p. 27, Fig. 7 | col. 4:50-53 |
| b) a software application allowing said viewing and modification to be done from inside a smart spray foam respirator mask using an internal projection display... | The complaint alleges the Reactor Connect app performs "similar functionalities" to the patented system, but does so on a smartphone. The complaint does not allege the accused product is used inside a respirator mask or uses a projection display. | ¶¶76-77 | col. 4:54-59 |
| c) a communication gateway to interface with corresponding proportioner network protocol... | The accused Reactor Connect system wirelessly interfaces with Graco's Reactor 2 spray equipment. | ¶¶32, 76 | col. 4:59-63 |
| e) an interface to an optical depth sensor... used to scan a three-dimensional surface... | The complaint does not provide sufficient detail for analysis of this element, as no facts are alleged regarding an optical depth sensor or 3D mapping in the accused product. | N/A | col. 4:66-col. 5:2 |
Identified Points of Contention
- Scope Questions: The infringement allegation for Claim 1 of the ’980 Patent appears to rely heavily on a theory of equivalence rather than literal infringement. The claim explicitly requires the system to be operated "from inside a smart spray foam respirator mask using an internal projection display." The complaint, however, accuses a smartphone application of infringement. (Compl. ¶77). A primary dispute will be whether a smartphone can be considered equivalent to the claimed respirator mask system, especially given the specificity of the claim language.
- Technical Questions: The infringement allegation for Claim 1 is silent on the required "interface to an optical depth sensor" for 3D mapping. The lack of any alleged corresponding feature in the accused product raises a substantial question as to whether infringement of this claim can be established.
V. Key Claim Terms for Construction
Term 1: "overall spray efficiency" (’703 Patent, Claim 1)
- Context and Importance: The infringement claim hinges on equating the accused product's "machine utilization" feature with this term. Practitioners may focus on this term because the complaint itself suggests a potential mismatch by stating the accused feature is "not as comprehensive" as the patented one (Compl. ¶55), making the term's scope critical.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term is not explicitly defined with limiting language in the claims themselves, which may support an argument for its plain and ordinary meaning as a general measure of performance.
- Evidence for a Narrower Interpretation: The specification describes the "OSE" pillar in detail: "The calculation is comprehensive of the rig material sprayed hourly goals, the actual material sprayed, the material spray depth, and the job difficulty level." (’703 Patent, col. 3:1-6). This passage may be used to argue that the term is limited to this specific, multi-factor calculation.
Term 2: "from inside a smart spray foam respirator mask using an internal projection display" (’980 Patent, Claim 1)
- Context and Importance: This limitation is at the heart of the dispute for the ’980 patent. The accused product is a smartphone app, not a system integrated into a respirator mask. The entire infringement theory for this claim may depend on whether this limitation can be met under the doctrine of equivalents.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party might point to the specification, which states, "as a more cost-efficient option, the sprayer can use the smart phone app downloaded to his phone to monitor and control the proportioner." (’980 Patent, col. 4:43-45). This could be cited to argue that a smartphone embodiment was contemplated by the inventor as part of the invention.
- Evidence for a Narrower Interpretation: The claim language is highly specific. The patent's title, abstract, and background repeatedly emphasize the novelty of integrating control into the respirator mask itself. (’980 Patent, Title; Abstract; col. 1:38-41). A party could argue that the specification's mention of a smartphone app describes an alternative, unclaimed embodiment and cannot be used to vitiate an explicit and central claim limitation.
VI. Other Allegations
Indirect Infringement
The complaint alleges induced infringement for all asserted claims. The theory is that Defendant provides the Reactor Connect system with instructions and knowledge that its customers and agents will use it in an infringing manner, such as by monitoring efficiency and material ratios (’703 Patent) or by remotely modifying parameters (’980 Patent). (Compl. ¶¶58, 64, 79).
Willful Infringement
Willfulness is alleged based on both pre- and post-suit knowledge. The complaint alleges Defendant had knowledge of the pending patent applications as early as 2017 through business and licensing discussions. (Compl. ¶¶27, 38). It also alleges knowledge based on a cease and desist letter sent by Plaintiff on April 5, 2021. (Compl. ¶37).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: For the ’703 patent, can the term "overall spray efficiency", which the patent specification links to a specific multi-factor calculation, be construed to cover the accused product's "machine utilization" feature, which the complaint itself suggests is less comprehensive?
- A second central issue will test the limits of the doctrine of equivalents: For the ’980 patent, can a smartphone application be found to infringe a claim that explicitly requires functionality "from inside a smart spray foam respirator mask using an internal projection display" and an "interface to an optical depth sensor," elements not alleged to be present in the accused product? The outcome may depend on whether the court finds that the specification's disclosure of a smartphone as an alternative embodiment can overcome the clear and specific limitations of the asserted claim.