DCT
2:24-cv-00080
Signode Industrial Group LLC v. Samuel Son & Co Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Signode Industrial Group LLC (Delaware)
- Defendant: Samuel, Son & Co., Ltd. (Canada) and Samuel, Son & Co. (USA) Inc. (Delaware)
- Plaintiff’s Counsel: K&L Gates LLP
- Case Identification: 2:24-cv-00080, E.D. Tex., 05/15/2024
- Venue Allegations: Plaintiff alleges venue is proper because Defendant Samuel USA owns and operates a sales, distribution, warehouse, and customer pick-up facility in Longview, Texas, which constitutes a regular and established place of business within the district.
- Core Dispute: Plaintiff alleges that Defendant’s STL-500 battery-operated plastic strapping tool infringes three patents related to the mechanical systems for tensioning and sealing straps.
- Technical Context: The technology concerns handheld, battery-powered industrial tools used to secure goods for transit by applying high tension to a plastic strap and welding the ends together.
- Key Procedural History: The complaint alleges that Defendant cited multiple Signode patents and publications during the prosecution of its own patent, suggesting Defendant actively monitors Signode's patent portfolio, an allegation relevant to the claim of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2012-09-24 | Earliest Priority Date for '417 and '430 Patents |
| 2016-09-18 | Earliest Priority Date for '418 Patent |
| 2023-06-06 | U.S. Patent No. 11,667,417 Issues |
| 2023-06-06 | U.S. Patent No. 11,667,418 Issues |
| 2024-03-19 | U.S. Patent No. 11,932,430 Issues |
| 2024-05-15 | First Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,667,417 - Strapping Device Having a Pivotable Rocker (issued June 6, 2023)
The Invention Explained
- Problem Addressed: The patent describes the challenge in mobile strapping tools of preventing the tensioning wheel from slipping against the plastic strap, a risk that increases with higher strap tensions. This slippage can lead to inefficient operation, incomplete tensioning, and potential safety risks. (’417 Patent, col. 2:26-42).
- The Patented Solution: The invention proposes a mechanism where the motor used to drive the tensioning wheel is also operably connected to a pivoting "rocker" that holds the wheel. As strap tension increases, the required motor torque also increases. The invention leverages this increased torque to pivot the rocker, which in turn increases the pressing force of the tensioning wheel against the strap. This creates a self-regulating system that automatically applies more pressure as needed to prevent slippage. (’417 Patent, Abstract; col. 3:1-17).
- Technical Importance: This design offers an automated way to improve the reliability of the tensioning process at high forces without requiring a separate, complex mechanism to manage the pressing force. (’417 Patent, col. 4:1-11).
Key Claims at a Glance
- The complaint asserts independent claim 1. (Compl. ¶36).
- The essential elements of claim 1 are:
- A base comprising a tensioning plate;
- A rocker pivotable about a rocker-pivot axis from a first rocker position to a second rocker position;
- A tensioning wheel rotatable about a tensioning-wheel axis and pivotable with the rocker to move toward or away from the tensioning plate;
- A sealing device;
- A spring that biases the rocker to the first rocker position; and
- An input device movable to activate a motor operably connected to the rocker to pivot it from the first to the second position, where the spring returns the rocker to the first position when the input device is released.
U.S. Patent No. 11,667,418 - Strapping Apparatus (issued June 6, 2023)
The Invention Explained
- Problem Addressed: The patent addresses the problem of releasing the tensioning mechanism from a highly tensioned strap after welding. Known freewheel mechanisms can release the stored energy abruptly, creating a high dynamic load that can damage the fresh weld or the tool's components. (’418 Patent, col. 2:10-30).
- The Patented Solution: The invention discloses a release mechanism featuring a blocking element and a lever system. To release the strap, the lever is moved, which in turn disengages the blocking element that was preventing the tensioning wheel from rotating backward. The system is designed to allow for a gradual, rather than abrupt, release of the stored tension, for example by using a wrap spring that permits initial slippage before full disengagement. (’418 Patent, Abstract; col. 3:19-34).
- Technical Importance: This gradual release mechanism reduces stress on both the newly created strap weld and the tool’s internal components, enhancing the overall reliability and longevity of the strapping system. (’418 Patent, col. 2:20-30).
Key Claims at a Glance
- The complaint asserts independent claim 1. (Compl. ¶47).
- The essential elements of claim 1 are:
- A base plate and a tensioning plate on the base plate;
- A rocker pivotable between a first and second position;
- A tensioning wheel pivotable with the rocker and rotatable in a tensioning and a reverse direction;
- A blocking element connected to the tensioning wheel;
- A shaft;
- A lever movable between a first position (where the blocking element prevents reverse rotation of the tensioning wheel) and a second position (where the blocking element allows reverse rotation); and
- A rotatable element configured to force the lever from the first to the second position.
Multi-Patent Capsule: U.S. Patent No. 11,932,430 - Strapping Device Having a Pivotable Rocker (issued March 19, 2024)
- Technology Synopsis: This patent discloses a strapping device where a single motor and drive shaft perform dual, opposing functions. Rotation of the drive shaft in a first direction causes a rocker to pivot, moving the tensioning wheel to apply tension to a strap. Rotation in the second, opposite direction actuates a transmission mechanism that moves a friction-welding device to its welding position to seal the strap. This integrated design aims to create a more compact and mechanically efficient tool. (’430 Patent, Abstract; col. 1:50-62).
- Asserted Claims: The complaint asserts independent claim 1. (Compl. ¶56).
- Accused Features: The complaint alleges that the STL-500 tool’s motor, drive shaft, rocker assembly, cam and transmission mechanism, and friction-welding device collectively infringe the patent. (Compl. ¶¶57-62).
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is the "STL-500 battery plastic strapping tool" manufactured and sold by Defendant. (Compl. ¶¶28-29).
Functionality and Market Context
- The STL-500 is a battery-powered tool designed to apply polyester or polypropylene straps to goods for packaging and transit. (Compl. ¶32, FIG. at p. 8). The complaint alleges the tool operates by tensioning a strap around an object using a tensioning wheel and then sealing the strap via a welding device. (Compl. ¶¶37-42). The complaint provides detailed photographic evidence from a teardown of the STL-500, with labels identifying the specific components alleged to map onto the patent claims, such as the base, tensioning plate, rocker, and motor. (Compl. ¶¶37-42). One image depicts the base and tensioning plate of the accused device. (Compl. ¶37). The tool is also supported by a mobile application for user customization and maintenance tracking. (Compl. ¶30).
- The complaint alleges that the market for high-end battery plastic strapping tools is highly competitive and that Plaintiff's related BXT3 series commands over half of the global market share, positioning the accused STL-500 as a direct competitor. (Compl. ¶¶22, 26, 29).
IV. Analysis of Infringement Allegations
’417 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a base comprising a tensioning plate; | The STL-500 includes a base and a tensioning plate. The complaint includes a photograph identifying these components. (Compl. ¶37). | ¶37 | col. 6:30-34 |
| a rocker pivotable about a rocker-pivot axis from a first rocker position to a second rocker position; | The STL-500 includes a rocker that pivots about an axis between a first and second position. The complaint provides photographs showing the rocker pivot axis and the rocker in both positions. (Compl. ¶38). | ¶38 | col. 6:40-55 |
| a tensioning wheel rotatable about a tensioning-wheel axis and pivotable with the rocker such that movement... moves the tensioning wheel away from the tensioning plate and movement... moves the tensioning wheel toward the tensioning plate; | The STL-500 has a tensioning wheel that rotates on an axis and pivots with the rocker, moving toward the tensioning plate in the first rocker position and away from it in the second. (Compl. ¶39). | ¶39 | col. 6:36-44 |
| a sealing device; | The STL-500 includes a sealing device. (Compl. ¶40). | ¶40 | col. 20:34 |
| a spring imparting a spring force to the rocker that biases the rocker to the first rocker position; | The STL-500 includes a spring that imparts force on the rocker to bias it toward the first rocker position. (Compl. ¶41). | ¶41 | col. 20:35-37 |
| an input device movable from a release position to an activated position to activate a motor operably connected to the rocker to pivot the rocker... wherein the spring forces the rocker... responsive to the input device being released... | The STL-500 includes an input device and a motor. The motor is alleged to be operably connected to the rocker to pivot it, with the spring forcing the rocker to return upon release of the input device. (Compl. ¶42). | ¶42 | col. 20:37-45 |
- Identified Points of Contention:
- Technical Questions: A primary question will be one of dynamic functionality. While the complaint's photographs identify the required structural components (motor, rocker, spring), a key factual dispute will be whether the motor is "operably connected" in a way that it actively "pivot[s] the rocker" as claimed, or if the connection serves a different primary purpose. The precise interaction and sequence of operations between the input device, motor, rocker, and spring will be a focus of discovery and expert analysis.
’418 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a base plate and a tensioning plate on the base plate; | The STL-500 includes a base plate and a tensioning plate on the base plate. (Compl. ¶48). | ¶48 | col. 9:1-3 |
| a rocker pivotable about a rocker axis from a first rocker position to a second rocker position; | The STL-500 includes a rocker that pivots between two positions. (Compl. ¶49). | ¶49 | col. 9:4-6 |
| a tensioning wheel pivotable with the rocker... wherein the tensioning wheel is rotatable... in a tensioning direction and in a reverse direction...; | The STL-500 has a tensioning wheel that pivots with the rocker and rotates in forward and reverse directions. (Compl. ¶50). | ¶50 | col. 9:7-13 |
| a blocking element indirectly connected to the tensioning wheel and rotatable...; a shaft...; a lever movable between a first... and a second lever position...; and a rotatable element... configured to force the lever to move from the first... to the second... position... | The complaint alleges the STL-500 contains a blocking element, shaft, lever, and rotatable element that perform the claimed functions. Photographs show these components and their alleged movement between a first, engaged position and a second, disengaged position. (Compl. ¶51). | ¶51 | col. 9:14-29 |
- Identified Points of Contention:
- Scope Questions: The term "indirectly connected" between the blocking element and tensioning wheel raises a question of scope. The parties may dispute how attenuated this connection can be while still meeting the limitation.
- Technical Questions: The infringement allegation hinges on a complex, multi-part mechanical interaction. The key technical question is whether the accused components, as identified in the complaint's photographs (Compl. ¶51), actually operate as a system where the "rotatable element" is "configured to force the lever" to move, which in turn controls the "blocking element" to selectively prevent the tensioning wheel's reverse rotation. Proving this precise sequence of causation and function, beyond the mere presence of the parts, will be critical.
V. Key Claim Terms for Construction
’417 Patent
- The Term: "operably connected"
- Context and Importance: This term governs the relationship between the motor and the rocker. The nature of this connection is central to the core inventive concept of using the motor's drive to pivot the rocker. Practitioners may focus on this term because its construction will determine whether a direct gear linkage is required or if a more indirect functional relationship suffices for infringement.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The abstract broadly states the motor is "operably connectable to the rocker," and the patent describes various gearing embodiments, which may support an interpretation not limited to one specific mechanical linkage. (’417 Patent, Abstract; col. 4:35-40).
- Evidence for a Narrower Interpretation: The detailed description and figures illustrate specific embodiments using planetary gear sets to connect the motor and rocker, which could support a narrower construction tied to the disclosed gear-driven mechanisms. (’417 Patent, FIG. 2; col. 8:30-67).
’418 Patent
- The Term: "blocking element"
- Context and Importance: This functional term is at the heart of the patent's controlled-release mechanism. The definition of what constitutes a "blocking element" and how it "prevents" rotation will be critical to the infringement analysis.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term is primarily defined by its function: "prevents the tensioning wheel from rotating in the reverse direction." (’418 Patent, cl. 1). This functional language may support a broader scope covering any component that achieves this result in the context of the claimed system.
- Evidence for a Narrower Interpretation: The specification and figures depict specific structures that perform the blocking function, such as a ratchet-like component interacting with a lever. A defendant may argue the term should be limited to structures similar to the disclosed embodiments, rather than any component that performs a blocking function. (’418 Patent, FIG. 3; col. 10:30-44).
VI. Other Allegations
- Willful Infringement: The complaint alleges willful infringement for all three asserted patents. The allegations are based on the theory that Defendant was aware of or willfully blind to the patents. (Compl. ¶¶ 44, 53, 64). As factual support, the complaint alleges that Defendant actively monitors Plaintiff’s patent portfolio, having cited numerous Signode patents and product literature during the prosecution of its own patent. (Compl. ¶33). Willfulness is also alleged based on Defendant’s continued infringement after receiving notice of the patents via the filing of the complaint. (Compl. ¶¶ 44, 53, 64).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of dynamic operation: do the mechanical components identified in the accused tool via static teardown photographs actually operate in the precise sequence and with the functional relationships required by the claims? In particular, does the motor in the accused device actively pivot the rocker as required by the ’417 patent, and does the accused release mechanism function via the specific multi-element causal chain claimed in the ’418 patent?
- The outcome may depend on claim construction: will functional terms like the ’417 patent’s "operably connected" and the ’418 patent’s "blocking element" be given a broad, functional meaning, or will they be construed more narrowly in light of the specific gear trains and mechanical linkages disclosed in the patent embodiments?
- A key question for willfulness will concern pre-suit knowledge: does evidence that Defendant cited Plaintiff’s older patents during its own patent prosecution establish a "willful blindness" to the subsequently-issued asserted patents, or will Defendant's alleged conduct be found insufficient to meet the standard for pre-suit willfulness?