DCT
2:23-cv-00391
System Stormseal Pty Ltd v. SRS Distribution Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Stormseal USA, LLC (Florida) and System Stormseal Pty Ltd. (Australia)
- Defendant: SRS Distribution Inc. (Delaware)
- Plaintiff’s Counsel: Loveless Law Group
- Case Identification: 2:23-cv-00391, E.D. Tex., 08/29/2023
- Venue Allegations: Venue is alleged to be proper in the Eastern District of Texas because Defendant's headquarters are located in the district, and it allegedly commits acts of infringement there, including operating retail stores and conducting training for the accused methods.
- Core Dispute: Plaintiff alleges that Defendant’s "StormGear" temporary roofing system, and the method for installing it, infringes a patent on a method for covering storm-damaged structures with a heat-shrinkable film.
- Technical Context: The technology provides a robust temporary covering for storm-damaged roofs, designed as a more durable and secure alternative to traditional tarpaulins.
- Key Procedural History: The complaint alleges that Defendant had pre-suit knowledge of the patent-in-suit as of February 2023, and that Plaintiff sent a cease-and-desist letter in June 2023. The patent-in-suit was the subject of a Certificate of Correction, which may indicate a focus on specific claim language.
Case Timeline
| Date | Event |
|---|---|
| 2008-06-02 | ’484 Patent Priority Date |
| 2021-11-09 | ’484 Patent Issue Date |
| 2022-04-12 | ’484 Patent Certificate of Correction Issued |
| 2023-02-01 (approx.) | Plaintiff alleges Defendant's first notice of the ’484 Patent |
| 2023-06-08 | Plaintiff's counsel sent cease-and-desist letter |
| 2023-08-29 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,168,484 - "Roof and Wall Cover System"
- Patent Identification: U.S. Patent No. 11,168,484, "Roof and Wall Cover System", issued November 9, 2021.
The Invention Explained
- Problem Addressed: After a storm, temporarily covering a damaged roof with conventional tarpaulins is often ineffective. Tarpaulins are difficult to secure, vulnerable to wind, heavy, and awkward to position, creating safety issues and failing to provide a durable seal against the elements (Compl. ¶14; ’484 Patent, col. 1:36-44).
- The Patented Solution: The invention is a method for applying a protective cover using a heat-shrinkable film. The method involves securing the edges of a sheet of this film to the structure, typically by wrapping the film around battens and attaching them to the eaves or fascia. Heat is then applied, causing the film to shrink and conform tightly to the roof's surface, creating a secure, waterproof barrier (Compl. ¶15; ’484 Patent, col. 6:28-50, Fig. 2).
- Technical Importance: This method provides a temporary roofing solution that is more resilient to weather than tarps, allowing damaged structures to remain protected for extended periods until permanent repairs are feasible (Compl. ¶¶1, 18).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 2, as well as dependent claim 3 (Compl. ¶¶52-54).
- Independent Claim 1: Recites a method of providing covers over a "storm damaged built structure" with essential elements including:
- applying a sheet of heat shrinkable film (low density polyethylene with shrinking resins) over the roof;
- wrapping portions of the leading edge around a first batten and attaching it to an underside of a first eave or facia;
- wrapping portions of the trailing edge around a second batten and attaching it at a different location; and
- heating the sheet to shrink it tight against the built structure.
- Independent Claim 2: Recites a similar method for covering a "built structure" (as corrected) with essential elements including:
- cutting a sheet of film from a roll;
- applying the sheet over the roof from a first edge to a second edge;
- wrapping the leading edge around a first batten and attaching it to an underside of a first eave or facia;
- wrapping the trailing edge around a second batten and attaching it to an underside of a second eave or facia at a different location; and
- heating the film to cause it to conform to the roof.
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is the method of installing the "StormGear" temporary roofing system, which is part of Defendant's "TopShield" brand of residential roofing products (Compl. ¶¶29-30).
Functionality and Market Context
- The StormGear system is described as a direct competitor to the Plaintiff's product, using a heat-shrinkable film made of low-density polyethylene that is applied to a roof, secured, and heated to conform to the roof's shape (Compl. ¶¶31, 34). The complaint alleges that Defendant provides extensive training on this installation method through materials like a "STEP BY STEP VIDEO TRAINING SERIES" available on YouTube (Compl. ¶¶9, 45). One screenshot from a training video shows a large roll of the accused "SHIELD MEMBRANE" being prepared for installation (Compl. p. 9).
IV. Analysis of Infringement Allegations
The complaint alleges that Defendant directly infringes by performing the patented method during demonstrations and training, and indirectly infringes by instructing its customers on how to perform the method (Compl. ¶¶52-54). The allegations for Claim 2 are summarized below.
’484 Patent Infringement Allegations
| Claim Element (from Independent Claim 2) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| cutting a sheet of film from a roll of heat shrinkable film | Defendant's training instructs users to cut the film from a roll before applying it to the roof. A training video screenshot shows installers preparing to cut the film (Compl. p. 11). | ¶¶36-37 | col. 3:13-18 |
| after said cutting step, applying the sheet of film over the portion of the roof to extend from a first edge to a second edge of the built structure... | Installers are instructed to extend the cut film over the portion of the roof being covered, from one edge of the structure to another. | ¶¶38-39 | col. 6:36-39 |
| wrapping portions of the leading edge around a first batten and attaching the first batten to an underside of a first eave or to a facia of the built structure | The method uses battens, called "furring strips," and instructs installers to wrap the film's edge around the strip and attach it to the eave or facia with nails or screws. A video screenshot depicts this attachment process (Compl. p. 13). | ¶¶40-41 | col. 6:30-35 |
| wrapping portions of the trailing edge around a second batten and attaching the second batten to an underside of a second eave or to the facia of the built structure... | The complaint alleges that furring strips are used on both the leading and trailing edges of the film. | ¶42 | col. 10:20-25 |
| heating the film to cause the film to conform to the portion of the roof | The final step involves heating the film so that it shrinks and conforms to the roof's shape. The complaint includes a screenshot from a video titled "SHRINKING THE MEMBRANE" (Compl. p. 15). | ¶43 | col. 6:43-50 |
- Identified Points of Contention:
- Scope Questions: Claim 1 is limited to a "storm damaged built structure." The infringement analysis may need to establish that Defendant's training materials are directed at this specific application, not just general-purpose roofing or new construction, to prove infringement of that claim.
- Technical Questions: The infringement case appears heavily reliant on Defendant's own training videos. A key question will be whether the actions depicted in the videos and described in the complaint meet every limitation precisely. For example, does the act of securing the film with a "furring strip" meet the "wrapping... around a... batten" limitation as construed by the court?
V. Key Claim Terms for Construction
- The Term: "built structure"
- Context and Importance: This term appears in both asserted independent claims. Its interpretation is critical because a Certificate of Correction was issued specifically to change "structure" to "built structure" in Claims 2 and 3, suggesting its meaning is significant to patentability or scope. Practitioners may focus on this term because its definition could either limit the patent's applicability (e.g., to exclude buildings still under construction) or broaden it, directly impacting the infringement analysis against Defendant's widely marketed product.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent's "Background" section discusses protecting not only damaged buildings but also "buildings under construction," which are often exposed to the elements for considerable time (e.g., ’484 Patent, col. 1:47-54). This could support a reading of "built structure" that includes both completed and partially constructed buildings.
- Evidence for a Narrower Interpretation: The specification repeatedly uses the term in the context of a pre-existing "building" with features like "eaves," "fascia boards," and "rafters" (e.g., ’484 Patent, Fig. 2; col. 6:30-35). Claim 1 explicitly ties the term to a "storm damaged" context. This could support an interpretation limiting "built structure" to a substantially complete building, potentially excluding application to bare framing or other incomplete structures.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement under 35 U.S.C. § 271(b), stating that Defendant provides a "STEP BY STEP VIDEO TRAINING SERIES" and other instructions that specifically train and encourage customers and contractors to install StormGear in an infringing manner (Compl. ¶¶45, 54). It is also alleged that the StormGear film is a crucial component of the patented method and not a staple article of commerce, supporting a claim for contributory infringement under 35 U.S.C. § 271(c) (Compl. ¶57).
- Willful Infringement: The complaint alleges Defendant has infringed willfully, citing pre-suit knowledge of the ’484 Patent since at least February 2023 through direct communications and a formal cease-and-desist letter sent on June 8, 2023 (Compl. ¶¶48, 61).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of evidentiary proof versus claim language: While the complaint provides compelling visual evidence from the Defendant's own training materials, the case will hinge on whether the Plaintiff can prove that the specific actions shown and taught in those materials satisfy every technical limitation of the asserted claims as they are ultimately construed by the court.
- The case will also present a question of definitional precision: Can the Defendant distinguish its accused method by arguing for a narrow construction of a key term, such as "wrapping" or "built structure", that creates a non-infringing alternative? The patent's Certificate of Correction suggests the term "built structure" will be a focal point of this dispute.
- Finally, a key question will be the strength of the willfulness claim: Given the allegations of direct pre-suit communications and a cease-and-desist letter, the court will have to determine if Defendant's continued conduct after being put on notice was objectively reckless, potentially exposing it to enhanced damages.