DCT
3:23-cv-02746
National Nail Corp v. PrimeSource Building Products Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: National Nail, Corp. (Michigan)
- Defendant: PrimeSource Building Products, Inc. (Delaware)
- Plaintiff’s Counsel: Winstead PC
- Case Identification: 3:23-cv-02746, N.D. Tex., 12/12/2023
- Venue Allegations: Plaintiff alleges venue is proper in the Northern District of Texas because Defendant maintains its principal, regular, and established place of business within the district.
- Core Dispute: Plaintiff alleges that Defendant’s Grip-Rite® Ninja™ Hidden Deck Clip infringes two patents related to hidden fastener units used for installing grooved deck boards.
- Technical Context: The technology concerns hidden fastening systems for deck construction, which aim to provide a clean aesthetic and improved safety by eliminating visible screw or nail heads.
- Key Procedural History: The complaint alleges that Defendant had pre-suit notice of the patents-in-suit based on patent marking of Plaintiff's own commercial product, the CAMO EdgeX® Clip.
Case Timeline
| Date | Event |
|---|---|
| 2017-08-15 | Earliest Priority Date for ’218 and ’848 Patents |
| 2019-08-13 | U.S. Patent No. 10,378,218 Issues |
| 2023-12-12 | U.S. Patent No. 11,840,848 Issues |
| 2023-12-12 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,378,218 - "Hidden Fastener Unit and Related Method of Use"
- Patent Identification: U.S. Patent No. 10,378,218 (“the ’218 Patent”), entitled "Hidden Fastener Unit and Related Method of Use," issued August 13, 2019. (Compl. ¶18).
The Invention Explained
- Problem Addressed: The patent’s background section describes challenges with conventional deck fasteners, noting that visible nails and screws can be aesthetically displeasing and become safety hazards. (’218 Patent, col. 1:11-23). It further notes that prior hidden fastener systems often fit loosely in the grooves of deck boards, failing to prevent movement, and can be cumbersome for a user to hold in place during installation. (’218 Patent, col. 1:24-46).
- The Patented Solution: The invention is a fastener unit designed to be self-supporting within a deck board’s groove before a screw is driven. It includes a spacer block, a grip element that engages the groove, and a "resilient compression element." (’218 Patent, Abstract). This resilient element, such as a pair of wings, is designed to be vertically compressed to fit into the groove and then forcibly expand, which secures the unit in place and allows an installer to place multiple clips before fastening them. (’218 Patent, col. 1:62-col. 2:6).
- Technical Importance: The self-supporting feature of the fastener unit potentially increases installation efficiency by allowing a user to set multiple clips and boards before returning to drive the fasteners with both hands. (’218 Patent, col. 2:61-67).
Key Claims at a Glance
- The complaint asserts at least independent claim 17. (Compl. ¶25).
- Claim 17 includes the following essential elements:
- A fastener unit adapted to secure at least one board to a support.
- A spacer block defining a fastener hole and having a thickness corresponding to a gap between boards.
- A grip element extending from the spacer block, configured to fit in a board's groove and receive a fastener.
- A first resilient compression element extending from the spacer block that is vertically compressible.
- The resilient compression element is configured to compress to fit in, and then forcibly expand within, the groove to secure the spacer block.
U.S. Patent No. 11,840,848 - "Hidden Fastener Unit and Related Method of Use"
- Patent Identification: U.S. Patent No. 11,840,848 (“the ’848 Patent”), entitled "Hidden Fastener Unit and Related Method of Use," issued December 12, 2023. (Compl. ¶19).
The Invention Explained
- Problem Addressed: The patent addresses similar problems as the ’218 Patent, focusing on creating a hidden fastener that securely holds boards to a support structure while being easy to install. (’848 Patent, col. 1:41-51).
- The Patented Solution: This invention also describes a fastener unit with a spacer block and a grip element. Its distinguishing feature is the use of two resilient elements that project from a surface of the spacer block, with a grip element disposed between them. (’848 Patent, Abstract; col. 12:12-18). These resilient elements are described as "bendable relative to a reference plane that is aligned with the grip element," which provides the mechanism for securing the clip within a board's groove during installation. (’848 Patent, col. 12:23-26).
- Technical Importance: The use of two distinct resilient elements alongside a central grip element may offer a more stable and secure temporary hold within the board groove compared to a single compression element.
Key Claims at a Glance
- The complaint asserts at least independent claim 8. (Compl. ¶35).
- Claim 8 includes the following essential elements:
- A fastener unit with a spacer block having upper and lower portions and defining a fastener hole and a grip element recess.
- A first resilient element projecting from a first surface of the spacer block to engage a board's groove.
- A second resilient element projecting from the same surface to engage the groove distal from the first resilient element.
- A grip element disposed between the first and second resilient elements.
- The first and second resilient elements are bendable relative to a reference plane aligned with the grip element.
- The spacer block is securable adjacent the groove to establish a gap between boards.
III. The Accused Instrumentality
Product Identification
- The Grip-Rite® Ninja™ Hidden Deck Clip (the "Infringing Product"). (Compl. ¶14).
Functionality and Market Context
- The accused product is a fastener used for installing grooved deck boards onto joists. (Compl. ¶10). The complaint includes several annotated images showing the product's features. A labeled photograph depicts the product's "Spacer Block," "First Fastener Hole," "Vertical Axis," and front and rear surfaces. (Compl. ¶27, p. 7). Other visuals illustrate how a "Grip Element" fits into the groove of a deck board and how "Compression levers wedge into the groove" to hold the clip in place. (Compl. ¶28, p. 8).
- The complaint alleges the product is marketed as a "New Product" for installing decks "FASTER!". (Compl. ¶¶ 15-16).
IV. Analysis of Infringement Allegations
’218 Patent Infringement Allegations
| Claim Element (from Independent Claim 17) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A fastener unit adapted to secure at least one board to a support... | The Infringing Product is a fastener unit shown securing a "First Board" to a "Support." | ¶26 | col. 1:5-8 |
| a spacer block defining a first fastener hole, the spacer block having a thickness extending from a front surface to a rear surface, the thickness corresponding to a gap between a first board and a second adjacent board, the spacer block including a vertical axis; | The Infringing Product has a "Spacer Block" with a "First Fastener Hole," a "Thickness," front and rear surfaces, and a "Vertical Axis." The thickness is shown corresponding to the "Gap" between boards. | ¶27 | col. 6:49-59 |
| a grip element extending from the spacer block, the grip element configured to fit in and engage a first groove defined by the first board...the grip element configured to receive a fastener through at least a portion of the grip element; | The Infringing Product has a "Grip Element" that "Fits in and Engages" a "First Groove" of a "First Board." The "Grip Element Receives Fastener." | ¶28 | col. 8:37-43 |
| wherein the spacer block includes a first resilient compression element extending from the spacer block, the first resilient compression element being vertically compressible toward a first plane that is transverse to the vertical axis, the first resilient compression element configured to compress and fit in, and forcibly expand within the first groove of the first board... | The Infringing Product has a "First Resilient Compression Element" shown as being "Compressible Toward First Plane" and fitting in the "First Groove." The complaint describes this feature as "Compression levers [that] wedge into the groove." | ¶29 | col. 9:26-38 |
’848 Patent Infringement Allegations
| Claim Element (from Independent Claim 8) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a spacer block including an upper portion and a lower portion, the spacer block having a thickness... the thickness configured to set a preselected gap... the spacer block defining a grip element recess... | The Infringing Product has a "Spacer Block" with an "Upper Portion" and "Lower Portion," a "Thickness" that corresponds to a "Gap," and a "Grip Element Recess Through Thickness." | ¶37 | col. 12:2-9 |
| a first resilient element projecting away from a first surface of the spacer block, the first resilient element configured to engage a first groove of the first board; | The Infringing Product has a "First Resilient Compression Element" projecting from a "First Surface" of the "Spacer Block" and is shown engaging a "First Groove." | ¶38 | col. 12:10-12 |
| a second resilient element projecting away from the first surface of the spacer block, the second resilient element configured to engage the first groove of the first board distal from the first resilient element within the first groove; | The Infringing Product has a "Second Resilient Compression Element" shown projecting from the "First Surface" and positioned to engage the groove. | ¶39 | col. 12:13-16 |
| a grip element disposed between the first resilient element and the second resilient element and projecting away from the first surface of the spacer block... | The Infringing Product has a "Grip Element between Compression Elements" that projects from the "First Surface." A labeled image shows the accused product's grip element disposed between the first and second resilient compression elements. (Compl. ¶40, p. 17). | ¶40 | col. 12:17-22 |
| wherein the first resilient element and the second resilient element are bendable relative to a reference plane that is aligned with the grip element... | The Infringing Product's "First Resilient Compression Element and Second Resilient Compression Element are Bendable Relative to a Reference Plane." | ¶41 | col. 12:23-26 |
| wherein the spacer block is securable adjacent the first groove to establish a gap between the first board and the adjacent second board. | The Infringing Product's "Spacer Block" is shown securable adjacent the "First Groove" to establish a "Gap" between the "First Board" and "Second Board." | ¶42 | col. 12:27-29 |
Identified Points of Contention
- Scope Questions: A central question for the ’218 Patent may be whether the accused product’s "compression levers" meet the functional requirements of a "resilient compression element." The claim requires this element to be "vertically compressible" and to "forcibly expand." The analysis may focus on whether the accused levers function through compression and resilient expansion, or through a different mechanical action such as simple wedging.
- Technical Questions: For the ’848 Patent, a key technical question may be whether the accused product's structure meets the specific spatial arrangement of claim 8, which requires "a grip element disposed between the first resilient element and the second resilient element." The litigation may explore the precise structural boundaries of these three components in the accused device. Another question is whether the accused elements are "bendable relative to a reference plane that is aligned with the grip element" in the manner contemplated by the patent.
V. Key Claim Terms for Construction
The Term: "resilient compression element" (’218 Patent, cl. 17)
- Context and Importance: This term is central to the ’218 Patent's inventive concept of a self-supporting clip. The outcome of the infringement analysis will likely depend on whether the accused product's "compression fit lever" (Compl. ¶28) is found to be a "resilient compression element" that is "vertically compressible" and "forcibly expand[s]" as the claim requires.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the element functionally, stating that its portions "can be pinched toward one another" to convert it from an "open mode to a compressed mode," after which they "forcibly engage the groove to hold the fastener unit centered." (’218 Patent, col. 1:24-36). This functional description could support a construction that is not limited to a specific shape.
- Evidence for a Narrower Interpretation: The specification repeatedly refers to the element as comprising "wings" (e.g., ’218 Patent, col. 9:24-25) and the figures depict V-shaped structures (e.g., Fig. 3, elements 41UW, 41LW). A defendant may argue that the term should be limited to the V-shaped wing embodiments shown and described.
The Term: "bendable relative to a reference plane that is aligned with the grip element" (’848 Patent, cl. 8)
- Context and Importance: This limitation defines the required movement of the first and second resilient elements, which is the mechanism for securing the fastener. Infringement will depend on whether the accused product's elements are found to "bend" in the specific manner claimed. Practitioners may focus on this term because the complaint provides a visual explicitly mapping this limitation to the accused product, suggesting Plaintiff views it as a critical and met limitation. (Compl. ¶41).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification may not provide an explicit definition for "bendable" or the "reference plane," which could suggest that these terms should be given their plain and ordinary meaning to one of skill in the art.
- Evidence for a Narrower Interpretation: The patent specification and figures may depict a specific type of bending action. For example, Figure 3 of the related ’218 patent illustrates a specific vertical compression. A defendant could argue that "bendable" is limited to the specific type of flexing or deformation illustrated in the patent's embodiments, rather than any form of flexibility.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of infringement, stating that PrimeSource provides the Infringing Products to retailers who in turn sell them to consumers, who then use them in an infringing manner. (Compl. ¶¶ 31, 44).
- Willful Infringement: The complaint alleges that PrimeSource's infringement is willful and deliberate. (Compl. ¶¶ 32, 45). The basis for this allegation includes pre-suit notice, based on the marking of Plaintiff's own "CAMO EdgeX® Clip" product with the National Nail Patents. (Compl. ¶21).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of functional equivalence and claim scope: Does the accused product's "compression fit lever" operate by being "vertically compressible" and then "forcibly expand[ing]" as required by claim 17 of the ’218 patent, or does it achieve its hold through a technically distinct mechanism, such as simple wedging, that falls outside the claim's scope?
- A key structural question will be one of definitional boundaries: Does the accused product meet the specific spatial limitations of claim 8 of the ’848 patent, which requires a "grip element disposed between the first resilient element and the second resilient element"? The case may turn on how these distinct components are defined and delineated in the accused product's single-piece construction.
- A critical question for damages will be one of pre-suit knowledge: Does the patent marking on Plaintiff’s commercial product provide sufficient evidence to establish that Defendant had actual knowledge of the patents-in-suit before the complaint was filed, thereby supporting the claim for willful infringement?