DCT
3:20-cv-03639
NLB Corp v. Bingh
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: NLB Corp. (Michigan)
- Defendant: Bingham Manufacturing, Inc., d/b/a Bingham Industries (Texas)
- Plaintiff’s Counsel: Carlson, Gaskey & Olds, P.C.; The Mort Law Firm, PLLC
- Case Identification: 3:20-cv-03639, N.D. Tex., 04/10/2023
- Venue Allegations: Venue is alleged to be proper in the Northern District of Texas because Defendant's principal place of business is in the district, and it maintains a regular and established place of business there from which it allegedly commits acts of infringement.
- Core Dispute: Plaintiff alleges that Defendant’s replacement seals and back-up rings for high-pressure waterjet systems infringe a patent related to an improved rotary seal design.
- Technical Context: The technology concerns mechanical seals used within the rotating nozzles of high-pressure waterjet cleaning systems, a component subject to extreme forces and wear.
- Key Procedural History: This Amended Complaint follows a series of four cease-and-desist letters Plaintiff allegedly sent to Defendant regarding the patent-in-suit between October 2019 and October 2020. The patent-in-suit is a continuation of an earlier patent, U.S. Patent No. 7,600,700.
Case Timeline
| Date | Event |
|---|---|
| 2006-09-02 | Priority Date for U.S. Patent No. 8,251,301 |
| 2009-10-13 | Issue Date for U.S. Patent No. 7,600,700 |
| 2012-08-28 | Issue Date for U.S. Patent No. 8,251,301 |
| 2019-10-02 | First alleged cease-and-desist letter sent |
| 2023-04-10 | Amended Complaint filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,251,301 - “Rotating Fluid Jet With Improved Rotary Seal”
Issued August 28, 2012
The Invention Explained
- Problem Addressed: In prior art high-pressure waterjet systems, the seal between the rotating nozzle shaft and its housing created sealing points on both its inner and outer peripheral surfaces. This design subjected a large surface area of the seal to high pressure, generating significant force and heat that led to premature seal failure (’301 Patent, col. 1:20-30).
- The Patented Solution: The invention reconfigures the seal to eliminate the seal point on its outer periphery. Instead, the outer seal point is relocated to an angled forward face of the seal, which abuts a corresponding angled face on a back-up ring. This design brings the inner and outer sealing points very close together, drastically reducing the surface area exposed to high pressure. This reduction in load area lowers the overall force and heat on the seal, thereby extending its operational life ('301 Patent, col. 2:27-44; Fig. 3B). A diagram from the patent's Figure 3B is included in the complaint to illustrate this disclosed seal geometry (Compl. ¶14).
- Technical Importance: By reducing the forces acting upon the seal, the invention provides a more durable and long-lived component for use in extreme high-pressure, high-wear industrial applications ('301 Patent, col. 2:42-44).
Key Claims at a Glance
- The complaint asserts independent claims 7 and 11.
- Claim 7 (A seal):
- A seal body to be received between an outer surface of a shaft and an inner surface of a housing.
- The seal body has a forward face for abutting a structure to create an outer seal point.
- The seal body creates an inner seal point on an outer peripheral surface of the shaft.
- Claim 11 (A back-up ring and seal combination):
- A back-up ring with a forwardly extending face having an angled innermost surface to mate with a seal.
- The back-up ring has a flange and an outer surface extending radially outward.
- A seal body received between a shaft and housing.
- The seal has a forward face that abuts the back-up ring's angled surface to create an outer seal point.
- The seal body creates an inner seal point on the shaft's outer peripheral surface.
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are "Swivel Seals" (specifically part number 405880) and "Brass Backups" (specifically part number 405883) (Compl. ¶¶ 24, 26, 29). The complaint includes a photograph of packaging for the accused "SWIVEL SEAL, NLB" part number 405880 (Compl. p. 6).
Functionality and Market Context
- The accused products are sold as replacement components for high-pressure waterjet systems (Compl. ¶23). The complaint alleges that Defendant's catalog advertises these parts as "NLB® Compatible" and identifies them as being compatible with Plaintiff's "8000 and 8450 style guns" (Compl. ¶24). Plaintiff alleges it obtained and measured the accused 405880 seal and determined its dimensions are "within tolerances of NLB's swivel seals, which exhibit the claimed seal body arrangement" of the asserted patents (Compl. ¶25).
IV. Analysis of Infringement Allegations
’301 Patent Infringement Allegations (Claim 7)
| Claim Element (from Independent Claim 7) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A seal body to be received between an outer surface of a shaft and an inner surface of a housing, | Defendant’s 405880 seal is manufactured and sold for use in high-pressure waterjet guns, where it is placed between a shaft and housing (Compl. ¶¶ 24, 30). | ¶30 | col. 3:11-13 |
| said seal having a forward face for abutting the structure to provide an outer seal point between said seal and the structure, and | Plaintiff alleges that upon obtaining and measuring the 405880 seal, it determined the seal’s dimensions exhibit the claimed seal body arrangement, including the specified forward face (Compl. ¶¶ 25, 30). | ¶30 | col. 3:13-16 |
| said seal further creating an inner seal point for sealing on an outer peripheral surface of the shaft. | Plaintiff's measurements of the 405880 seal allegedly confirmed that it exhibits the claimed arrangement for creating an inner seal point (Compl. ¶¶ 25, 30). | ¶30 | col. 3:16-18 |
’301 Patent Infringement Allegations (Claim 11)
| Claim Element (from Independent Claim 11) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A back-up ring and seal combination for a rotating fluid nozzle comprising: a back-up ring having a forwardly extending face with an angled innermost surface to mate with a surface of a seal; | Defendant manufactures and sells its 405883 back-up ring and 405880 seal, which are alleged to be used in combination in a rotating fluid nozzle and to infringe this claim (Compl. ¶¶ 29, 31). | ¶31 | col. 4:2-4 |
| said back-up ring having an flange and an outer surface extending radially outwardly of said forwardly extending face; and | The accused back-up ring and seal combination is alleged to infringe this claim (Compl. ¶31). | ¶31 | col. 4:5-8 |
| the seal including a seal body... said surface of said seal having a forward face for abutting the angled innermost surface of the back-up ring to provide an outer seal point... and said seal body further creating an inner seal point... | The complaint alleges that the manufacture and sale of the 405880 seal and 405883 back-up ring, when used as intended in a waterjet gun, meets the limitations for the seal body and its creation of inner and outer seal points (Compl. ¶31). | ¶31 | col. 4:8-18 |
Identified Points of Contention
- Technical Questions: A primary question is whether the allegation that the accused seal's dimensions are "within tolerances" of Plaintiff's own products is sufficient to prove that the accused products practice every geometric and functional limitation of the claims. The complaint provides more detail on the accused seal than on the accused back-up ring, raising the question of what evidence supports the allegation that the back-up ring has the specific "angled innermost surface" and "flange" required by Claim 11.
- Scope Questions: The case may involve a dispute over whether advertising a part as "compatible" with Plaintiff's system constitutes an admission that the part, when installed, meets the specific structural and functional claim limitations, such as the precise location of the "outer seal point."
V. Key Claim Terms for Construction
The Term: "outer seal point"
- Context and Importance: The relocation of the "outer seal point" from the seal's outer periphery to its forward face is the central inventive concept. The outcome of the infringement analysis will depend heavily on whether the accused combination of a seal and back-up ring is found to create a "seal point" at this specific, unconventional location.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself describes the point as being formed "between said seal and the structure," which could be argued to encompass various contact points on the forward face (e.g., ’301 Patent, col. 3:15-16).
- Evidence for a Narrower Interpretation: The specification explicitly links this term to a specific structure, stating "the outer seal point 60 is now on the angled forward face 58 of the seal 50" (’301 Patent, col. 2:27-29). Figure 3B, which is reproduced in the complaint, illustrates this precise location, suggesting the term may be construed as being limited to the angled interface with the back-up ring (Compl. ¶14).
The Term: "clearance"
- Context and Importance: A corollary to moving the outer seal point is the creation of a "clearance" between the seal's outer periphery and the housing, a negative limitation recited in claims dependent on claim 7 (e.g., claim 10). Practitioners may focus on this term because infringement requires proving the absence of a seal at the traditional location.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The independent claims asserted do not specify that the clearance must exist along the "entire axial length" of the seal, potentially allowing for some incidental contact.
- Evidence for a Narrower Interpretation: The specification describes the purpose of the invention as reducing the load area, which is achieved by this clearance. Figure 3C is dedicated to showing a distinct "gap or clearance G between an outer surface of the seal and an inner surface of the housing," which supports a construction requiring a deliberate and functionally significant separation (’301 Patent, col. 2:32-35).
VI. Other Allegations
- Indirect Infringement: The complaint alleges both contributory and induced infringement of the ’301 patent. The claims are based on allegations that Defendant sells the accused seals and back-up rings knowing they are material components of the patented invention, have no substantial non-infringing use, and with the specific intent that its customers combine them to infringe (Compl. ¶¶ 37-53). The "NLB® Compatible" marketing is cited as evidence supporting these allegations (Compl. ¶42).
- Willful Infringement: The complaint alleges willful infringement based on Defendant's alleged knowledge of the ’301 patent. This knowledge is purportedly based on a series of four cease-and-desist letters sent by Plaintiff to Defendant starting on October 2, 2019. The complaint alleges that Defendant continued its infringing conduct without making any changes to its products despite this notice (Compl. ¶¶ 32-34, 49).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "outer seal point," as claimed, be met by a "compatible" replacement part, or will its construction be narrowly tied to the specific angled-face geometry disclosed in the patent's specification and figures?
- A key evidentiary question will be one of technical proof: is the allegation that the accused seal is dimensionally "within tolerances" of Plaintiff's product sufficient to establish that it meets every structural and functional limitation of the asserted claims, or will a detailed analysis of the accused product's independent operation reveal a functional mismatch?
- Given the multiple pre-suit notices alleged, a central question will be willfulness: did Defendant's continued sale of the accused products after receiving repeated notice of the ’301 patent rise to the level of objective recklessness required to support enhanced damages?