DCT

2:11-cv-00201

Patent Group LLC v. CertainTeed Corp

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:11-cv-00201, E.D. Tex., 08/05/2011
  • Venue Allegations: Venue is alleged to be proper based on Defendant’s sales and business activities within the Eastern District of Texas, including in Tyler and Marshall, Texas.
  • Core Dispute: Relator, acting as a private attorney general, alleges that Defendant has falsely marked its roofing shingle products with expired patent numbers in violation of 35 U.S.C. § 292, with the intent to deceive the public and deter competition.
  • Technical Context: The technology relates to the apparatus and methods for manufacturing multi-layer, laminated roofing shingles designed to have a more aesthetic, textured appearance than conventional shingles.
  • Key Procedural History: The complaint alleges that Defendant paid maintenance fees on the patents-in-suit, suggesting it had knowledge of their expiration dates. For U.S. Patent No. 5,426,902, the complaint notes that the patent was disclaimed subsequent to February 5, 2005, an event separate from its alleged expiration due to non-payment of maintenance fees.

Case Timeline

Date Event
1986-08-14 Priority Date for U.S. Patent Nos. 4,729,814 and 4,775,440
1988-03-08 Issue Date for U.S. Patent No. 4,729,814
1988-03-29 Priority Date for U.S. Patent No. 5,426,902
1988-10-04 Issue Date for U.S. Patent No. 4,775,440
1995-06-27 Issue Date for U.S. Patent No. 5,426,902
2005-02-05 U.S. Patent No. 5,426,902 allegedly disclaimed
2006-08-14 Alleged expiration date of U.S. Patent No. 4,729,814
2007-06-27 Alleged expiration date of U.S. Patent No. 5,426,902
2007-12-21 Alleged expiration date of U.S. Patent No. 4,775,440
2011-08-05 First Amended Complaint Filing Date

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

U.S. Patent No. 4,729,814 - "Apparatus for Making an Offset Laminated Roofing Shingle"

  • Patent Identification: U.S. Patent No. 4,729,814, "Apparatus for Making an Offset Laminated Roofing Shingle," issued March 8, 1988.

The Invention Explained

  • Problem Addressed: The patent’s background section describes prior methods for creating two-layer shingles as cumbersome, costly, and space-consuming, often requiring manual lamination and presenting problems with alignment and adhesion (ʼ814 Patent, col. 1:21-34).
  • The Patented Solution: The invention is an apparatus that automates the production of a three-level laminated shingle from a single, continuous glass mat. The apparatus slits a glass mat into wider and narrower sheets, coats and laminates them with their centerlines aligned, cuts the laminated sheet to create tabs, and then adheres additional narrow strips to the underside of those tabs to create a final, multi-layered product (ʼ814 Patent, Abstract; col. 2:1-6). This continuous process is illustrated in the flow diagram of Figure 1 (ʼ814 Patent, col. 2:22-26).
  • Technical Importance: The invention provided an automated, continuous manufacturing process for producing a more aesthetically complex, three-level shingle, aiming to improve production efficiency over prior multi-step or manual methods (ʼ814 Patent, col. 1:10-15).

Key Claims at a Glance

  • The complaint does not assert specific claims for infringement, as the action is for false marking. However, independent claim 1 is central to the patent's scope.
  • Essential elements of Claim 1:
    • Means for longitudinally slitting a glass mat into two sheets.
    • Means for laterally shifting one sheet relative to the other.
    • Means for applying an adhesive to one of the sheets.
    • Means for laminating the sheets together in an overlapping relation.
    • Means for cutting narrow strips from the edges of the laminated sheet.
    • Means for severing the laminated sheet into individual strips with alternating tabs and cut-outs.
    • Means for adhering the narrow strips to the tabs of the individual strips.

U.S. Patent No. 4,775,440 - "Method of Making an Offset Laminated Roofing Shingle"

  • Patent Identification: U.S. Patent No. 4,775,440, "Method of Making an Offset Laminated Roofing Shingle," issued October 4, 1988.

The Invention Explained

  • Problem Addressed: The patent, a divisional of the application that led to the ’814 patent, addresses the same manufacturing challenges: the difficulty of producing multi-layer shingles efficiently and with precise alignment (ʼ440 Patent, col. 1:20-38).
  • The Patented Solution: The invention is a method that mirrors the functions of the ’814 apparatus. It claims the sequence of steps for producing a three-level roofing shingle, including cutting a mat into two sheets, shifting one sheet, applying coatings, laminating the sheets, cutting the resulting product into strips with tabs, and adhering further strips to the tabs to create the final tri-level structure (ʼ440 Patent, col. 2:1-9).
  • Technical Importance: This patent claims the process counterpart to the ’814 apparatus, protecting the novel manufacturing method for creating aesthetically advanced shingles in a continuous operation (ʼ440 Patent, col. 1:10-15).

Key Claims at a Glance

  • The complaint does not assert specific claims for infringement. Independent claim 1 is central to the patent's scope.
  • Essential elements of Claim 1:
    • Longitudinally cutting a mat into a first and a narrower second sheet.
    • Laterally shifting one sheet relative to the other into spaced, overlying relationship with coincident centerlines.
    • Applying a continuous surface coating of molten bitumen to both sides of the first sheet and the underside of the second sheet.
    • Laminating the sheets together.
    • Cutting narrow strips from the edges of the layered sheet.
    • Cutting the layered sheet into strips with interdigitating tabs.
    • Shifting and laminating the narrow strips to the underside of the tabs.

Multi-Patent Capsule: U.S. Patent No. 5,426,902 - "Composite Shingle Having Shading Zones in Different Planes"

  • Patent Identification: U.S. Patent No. 5,426,902, "Composite Shingle Having Shading Zones in Different Planes," issued June 27, 1995.
  • Technology Synopsis: The patent describes a laminated composite shingle with layers of granules at different planes. A posterior layer with darker granules is partially visible through slots in, or below the edges of, a lighter-shaded anterior layer. This creates visually sharp, precise delineations between light and dark zones, simulating the texture of natural materials like wood shingles (ʼ902 Patent, Abstract; col. 1:34-44).
  • Asserted Claims: The complaint does not assert specific claims for infringement.
  • Accused Features: The complaint alleges that Defendant marks and advertises its "roofing shingle devices" with the ’902 patent number (Compl. ¶ 50). It further alleges this patent expired for non-payment of maintenance fees and was also separately disclaimed (Compl. ¶ 53-54).

III. The Accused Instrumentality

  • Product Identification: The accused products are identified as "roofing shingle devices" manufactured and sold by Defendant CertainTeed (Compl. ¶ 14, 32, 50).
  • Functionality and Market Context: The complaint alleges these are significant products for the Defendant, and that the false marking has likely helped Defendant maintain its market share and caused the retail price of the products to be inflated (Compl. ¶ 27-28, 45-46).
  • No probative visual evidence provided in complaint.

IV. Analysis of False Marking Allegations

The core of the complaint is not patent infringement, but false marking under 35 U.S.C. § 292. The central allegations are that Defendant marked its products with patent numbers that were expired and/or did not cover the products, and that this was done with an intent to deceive the public.

  • ’814 Patent False Marking Allegations
Allegation Category Alleged Factual Basis Complaint Citation
Marking Defendant marks and advertises its roofing shingle devices with the '814 patent number. ¶14
Falsity (Expiration) The '814 patent is expired, with an alleged expiration date of August 14, 2006. ¶16, 17
Falsity (Non-Coverage) The '814 patent "does not cover the products identified in Paragraph 14, or any products whatsoever." ¶24
Intent to Deceive Defendant is a skilled company with extensive patent experience; it paid maintenance fees on the patent, and therefore "knew or should have known" of the expiration date; and the marking was done to misuse patent rights and inhibit competition. ¶18, 19, 26
  • ’440 Patent False Marking Allegations
Allegation Category Alleged Factual Basis Complaint Citation
Marking Defendant marks and advertises its roofing shingle devices with the '440 patent number. ¶32
Falsity (Expiration) The '440 patent is expired, with an alleged expiration date of December 21, 2007. ¶34, 35
Falsity (Non-Coverage) The '440 patent "does not cover the products identified in Paragraph 32, or any products whatsoever." ¶42
Intent to Deceive Defendant is a skilled company; it paid maintenance fees on the patent, making it aware of the expiration schedule; and it had "no reasonable belief" that marking with an expired number was proper. ¶36, 37, 44
  • Identified Points of Contention:
    • Intent vs. Negligence: A primary question for the court will be whether the facts alleged—that a sophisticated company continued to mark products with expired patent numbers after having paid maintenance fees—are sufficient to establish the high standard of an "intent to deceive the public." The defense may argue this was an oversight or negligence, not deceptive intent.
    • Factual Basis for Non-Coverage: The complaint makes a secondary, alternative allegation that the patents do not cover the marked products. The complaint does not, however, provide specific technical details about the accused shingles to support this allegation, raising the question of what evidence will be presented to prove a mismatch between the patent claims and the products.

V. Key Claim Terms for Construction

The complaint, which centers on allegations of marking with expired patents, does not provide a basis for identifying key claim terms for construction. The dispute as framed does not turn on claim interpretation but rather on the patents' legal status and the defendant's alleged intent.

VI. Analysis of Intent Allegations

The complaint's theory of "intent to deceive," a required element for a false marking claim under 35 U.S.C. § 292, is based on circumstantial evidence. The specific facts alleged to support this element include:

  • Sophistication and Experience: Defendant is repeatedly characterized as a "skilled company" with "many decades of experience applying for, obtaining, maintaining and litigating patents" (Compl. ¶ 18, 36, 55). This is used to suggest Defendant understood the implications of patent expiration.
  • Knowledge via Maintenance Fees: The complaint alleges that by paying the 4th, 8th, and 12th-year maintenance fees for the patents, Defendant was in direct contact with the USPTO regarding the patents' status and "knew or should have known" their expiration dates (Compl. ¶ 19, 37, 56-57).
  • Anti-Competitive Motive: The complaint alleges the marking was done with the purpose of "misusing its patent rights to extend the term of its patents and inhibiting competition," thereby deceiving the public and deterring competitors (Compl. ¶ 7, 26, 44, 63).

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

  • A central issue will be one of statutory intent: Can the Relator present sufficient evidence to prove that the alleged marking with expired patent numbers was done with the specific "intent of deceiving the public," as required by 35 U.S.C. § 292, or will the conduct be characterized as mere oversight or administrative error?
  • A key evidentiary question will be one of causation and harm: The complaint alleges that the false marking deceived the public and allowed Defendant to maintain market share and inflate prices. The case may turn on what evidence is required to connect the act of marking with these alleged competitive harms.
  • A secondary factual question is one of product coverage: Should the primary allegation of expiration be insufficient, does the '814 apparatus patent or '440 method patent actually read on the Defendant's "roofing shingle devices," a technical issue on which the complaint provides limited detail?