R&D Workshop LLC v. Bailey

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: R&D Workshop, LLC (Texas)
  • Defendant: Justin Bailey (Texas)
  • Plaintiff’s Counsel: Donati Brashear Law Firm
• Case Identification: 3:19-cv-00107, S.D. Tex., 03/19/2019
• Venue Allegations: Venue is alleged to be proper in the Southern District of Texas because the defendant is a resident of League City, Galveston County, Texas, which is within the district.
• Core Dispute: Plaintiff alleges that Defendant’s "Gap Armour" product, a filler for concrete expansion joints, infringes a patent related to a compliant trim for the same purpose.
• Technical Context: The technology concerns pre-formed, flexible materials used to fill and seal the expansion joints between concrete slabs, such as in driveways and sidewalks.
• Key Procedural History: The complaint does not mention any prior litigation, licensing history, or administrative proceedings related to the patent-in-suit.

Case Timeline

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

U.S. Patent No. 8,132,380 - “Compliant Trim for Concrete Slabs,” Issued March 13, 2012

The Invention Explained

• Problem Addressed: The patent describes the problems with materials traditionally used in concrete expansion joints. Wood formwork is subject to rot and decay, holds moisture, and allows weed growth. (’380 Patent, col. 1:24-31). Viscous liquid sealants are described as labor-intensive, messy, and costly, with the final result being highly dependent on installer skill (’380 Patent, col. 1:36-44).
• The Patented Solution: The invention is a pre-formed, compliant trim designed to be easily inserted into the gap between concrete slabs. It features two key components: an "anchoring means" that uses friction or a wedging action to hold the trim securely in the joint, and a "depth limiting means" that ensures the top of the trim sits flush with or below the concrete surface. (’380 Patent, col. 3:1-6). This design, illustrated in embodiments like the beam-arm version in Figure 3, is intended to provide a durable, easy-to-install, and aesthetically pleasing seal that resists weed growth and is not a trip hazard. (’380 Patent, col. 4:42-60).
• Technical Importance: The invention aims to provide a cost-effective, durable, and easy-to-assess replacement for rotted wood formwork that overcomes the installation and performance limitations of liquid sealants and other prior art solutions. (’380 Patent, col. 2:45-53).

Key Claims at a Glance

• The complaint asserts infringement of "one or more claims" of the ’380 Patent (Compl. ¶9). Independent claim 1 is representative.
• Independent Claim 1: A system for the repair or replacement of expansion joints for concrete slabs, comprising:
  • Concrete slabs comprising rounded edges above substantially parallel opposing faces, forming a space between them.
  • A compliant trim occupying the space.
  • A depth limiting means that substantially occupies the volume between the rounded edges, has a width larger than the space between the parallel faces, is located substantially flush or below the surface, and has a convex curvature to minimize particulate accumulation.
  • An anchoring means that frictionally holds the trim in place by acting on the parallel opposing faces.

III. The Accused Instrumentality

Product Identification

• The accused product is identified as "Gap Armour" (Compl. ¶9).

Functionality and Market Context

• The complaint alleges that "Gap Armour" is a product used to fill expansion joints in concrete (Compl. ¶9). The plaintiff alleges that the defendant is "manufacturing or acquiring a product using the same patented systems or components" and that the product's "configuration is the same or similar to Plaintiff's patent" (Compl. ¶9). The complaint further alleges that the defendant markets the product using "the same features and descriptive terms and instructions as well as the benefits and uses of the product" (Compl. ¶9). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint does not contain a claim chart or detailed infringement contentions. The infringement theory is based on the allegation that the "Gap Armour" product has a "configuration [that] is the same or similar to Plaintiff's patent" (Compl. ¶9). The following table summarizes this general allegation against the elements of independent claim 1.

’380 Patent Infringement Allegations

Identified Points of Contention

• Technical Questions: The central issue is factual, as the complaint provides no evidence (e.g., product photos, technical data sheets) detailing the actual structure of the "Gap Armour" product. The key question will be whether discovery reveals that the accused product in fact contains structures that perform the functions of the claimed "depth limiting means" and "anchoring means."
• Scope Questions: The dispute may turn on the scope of the functional claim language. For instance, a question for the court will be whether any structure on the "Gap Armour" product that prevents it from falling into a joint can be considered a "depth limiting means," or if that term is limited by the specification to structures like the "cap" (21) that specifically engage the "rounded edges" of the concrete slabs (’380 Patent, col. 4:54-56).

V. Key Claim Terms for Construction

The complaint does not provide sufficient detail for a definitive analysis, but based on the patent, the following terms are likely to be central to the dispute.

• The Term: "depth limiting means"

• Context and Importance: This term is critical because it defines the feature that ensures the trim is properly positioned at or below the concrete surface, a key advantage cited over prior art. The scope of this term will determine what types of product designs can infringe.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The claim language itself is functional, suggesting any structure that performs the function of limiting depth could be covered. Claim 1 requires the means to "substantially occup[y] the volume between said rounded edges" and be "larger than the distance between said parallel opposing faces." (’380 Patent, col. 6:9-13).
  • Evidence for a Narrower Interpretation: The specification discloses specific structures for this means, such as a "cap" (21) or a "hollow arcuate section" (27) that are "in contact with edge radius 8 and 9." (’380 Patent, col. 4:54-56, col. 5:27-30). A defendant may argue the claims should be limited to these disclosed embodiments or equivalents thereof.

• The Term: "anchoring means"

• Context and Importance: This term defines how the trim is held in place. Its construction is core to infringement, as the specific mechanism of attachment distinguishes the invention. Practitioners may focus on this term because the patent describes a specific wedging action that allegedly makes removal more difficult than installation.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The claim language is functional, requiring only that the means "frictionally holds said compliant trim in place by acting on said parallel opposing faces." (’380 Patent, col. 6:25-27). This could arguably encompass any design that generates sufficient friction.
  • Evidence for a Narrower Interpretation: The specification details specific embodiments, including a series of "compliant beams" (16, 17, 18, 19) or a collapsible "tubular element" (25). (’380 Patent, col. 4:47-49; col. 5:23-24). The patent also describes a design where "the force to insert said trim is substantially less than the force to remove it," which could be argued as a required functional characteristic of the "anchoring means." (’380 Patent, col. 3:21-23).

VI. Other Allegations

• Indirect Infringement: The complaint pleads inducement and contributory infringement, alleging the defendant "solicits customers" and provides "instructions as well as the benefits and uses of the product." (Compl. ¶6, ¶9). The prayer for relief also requests an injunction against acts of contributory and inducing infringement (Prayer ¶D).
• Willful Infringement: Willfulness is alleged, but the basis for knowledge is asserted to be "from the time that Defendant became aware of the infringing nature of his action, which is the time of filing of Plaintiff's Original Complaint at the latest." (Prayer ¶C). This frames the claim as one for post-filing willfulness only, as no facts supporting pre-suit knowledge are alleged.

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

1. An Evidentiary Question of Structure: The case first turns on a fundamental evidentiary question for which the complaint provides no answer: what is the actual physical structure of the accused "Gap Armour" product? Without this information, any analysis of infringement is speculative. Discovery will be required to determine if the product incorporates structures that could correspond to the patent's claimed "anchoring means" and "depth limiting means."

2. A Definitional Question of Scope: Assuming the accused product has some form of anchoring and depth-limiting features, a core issue will be one of claim construction. Can the functional terms "anchoring means" and "depth limiting means" be broadly construed to cover any structure that performs the stated function, or will their scope be limited by the specific beam-arm and tubular embodiments disclosed and illustrated in the patent's specification? The resolution of this question will likely determine the outcome of the infringement analysis.