DCT

2:17-cv-00702

SME Steel Contractors v. Seismic Bracing

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Key Events
Amended Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:17-cv-00702, D. Utah, 07/07/2017
  • Venue Allegations: Venue is asserted in the District of Utah on the basis that both corporate and individual defendants reside in Utah, and the acts giving rise to the litigation occurred within the district.
  • Core Dispute: Plaintiffs allege that Defendants' buckling-restrained braces infringe two patents related to seismic brace apparatus technology, and further allege false advertising, copyright infringement, and unfair competition stemming from a former employee's alleged misappropriation of proprietary designs.
  • Technical Context: The technology at issue is buckling-restrained braces (BRBs), which are critical life-safety components integrated into large building structures to absorb and dissipate energy during seismic events like earthquakes.
  • Key Procedural History: The complaint alleges that Defendant Andrew J. Hinchman is a former employee of Plaintiff Core-Brace. This relationship is central to the non-patent claims and creates a strong inference of pre-suit knowledge for the purposes of the willful patent infringement allegations.

Case Timeline

Date Event
2002-05-29 Priority Date for U.S. Patent Nos. 7,174,680 and 7,305,799
2007-02-13 U.S. Patent No. 7,174,680 Issued
2007-12-11 U.S. Patent No. 7,305,799 Issued
2011 Defendant Hinchman's employment with Core-Brace ends
2017-06-27 Plaintiffs' Copyrighted Works registered
2017-07 Defendant SBC formed
2017-07-07 First Amended Complaint Filed

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

U.S. Patent No. 7,174,680, "Bearing Brace Apparatus" (Issued Feb. 13, 2007)

The Invention Explained

  • Problem Addressed: The patent describes a difficulty in designing energy-absorbing structural braces where a steel core must deform to absorb seismic energy while being encased in a bracing element (e.g., a concrete-filled tube). Prior art methods using an "asphaltic rubber layer" to separate the core from the casing were prone to deterioration and shearing after a limited number of compression and elongation cycles, compromising the brace's long-term integrity (’680 Patent, col. 1:56 - col. 2:15).
  • The Patented Solution: The invention proposes a more durable system using discrete "bearing members"—pads made of low-friction material like Teflon or high-molecular-weight polyethylene—placed between the steel core and the outer restraining assembly. Critically, an "air gap" is maintained between the core and these bearings. This gap prevents bonding, allows the core to deform independently, and provides space for the core to expand when compressed, minimizing pressure on the restraining assembly (’680 Patent, Abstract; col. 2:32-51). Figure 3 illustrates this arrangement, showing the core member (10), bearing members (60a, 60b), and air gaps (70a, 70b) within the restraining assembly (30).
  • Technical Importance: This design provides a mechanism for a buckling-restrained brace to function reliably over many stress cycles without the degradation associated with earlier bonding-prevention materials (’680 Patent, col. 7:36-44).

Key Claims at a Glance

  • The complaint asserts independent claim 1 (’Compl. ¶74).
  • The essential elements of Claim 1 are:
    • A brace apparatus comprising a "core member" made of a "single piece of metal".
    • A "buckling restraining assembly" surrounding the core member's middle portion.
    • The assembly includes a "metal support", a "rigid cementitious layer", and "at least two separate bearing members".
    • The bearing members are interposed between the rigid layer and the core member.
    • An "air gap" is formed between the core member and the bearing members, such that the bearings are not in direct contact with the core.
  • The complaint alleges infringement of "one or more of the claims," reserving the right to assert others (’Compl. ¶74).

U.S. Patent No. 7,305,799, "Bearing Brace Apparatus" (Issued Dec. 11, 2007)

The Invention Explained

  • Problem Addressed: As a continuation-in-part of the '680 patent, this invention addresses the challenge of precisely controlling where plastic deformation occurs along the steel core. Uncontrolled deformation can lead to stress concentrations and premature failure of the brace (’799 Patent, col. 17:34-54).
  • The Patented Solution: The invention discloses a core member with a "variable width" or "varying cross-sectional area." The middle portion of the core is designed to be narrowest at its absolute center and to "progressively widen" towards its ends. This geometry ensures that when the brace is under load, yielding (plastic deformation) initiates at the weakest point—the center—and spreads predictably, preventing abrupt failure at the transition zones (’799 Patent, Abstract; col. 17:10-22).
  • Technical Importance: This design allows for more controlled and predictable energy dissipation, enhancing the reliability and safety of the brace by managing how and where it deforms under seismic stress (’799 Patent, col. 18:1-9).

Key Claims at a Glance

  • The complaint asserts independent claim 1 (Compl. ¶82).
  • The essential elements of Claim 1 are:
    • A brace apparatus with a "core member" that includes one or more "projections".
    • The core member's middle portion has a "varying cross-sectional area" and "progressively widen[s]" from its middle towards each end.
    • A "buckling restraining assembly" (including a "metal support" and a "rigid layer") surrounds the middle portion.
    • The "rigid layer" contacts the "projections" on the core member.
    • An "air gap" is positioned between the core member and the rigid layer to prevent bonding.
  • The complaint reserves the right to assert additional claims (Compl. ¶82).

III. The Accused Instrumentality

  • Product Identification: The accused instrumentalities are buckling-restrained braces ("BRBs") and associated services offered, sold, and distributed by Defendants (Compl. ¶¶ 23, 50). The complaint also identifies a "Design Manual" allegedly distributed by Defendants to customers that describes the accused products (Compl. ¶25).
  • Functionality and Market Context: The complaint alleges the accused products are marketed as "superior performing and more cost effective" BRBs for use in buildings and other structures (Compl. ¶23). It frames Defendants as direct competitors who have entered the BRB market by allegedly misappropriating Plaintiffs' designs and marketing materials to trade on Plaintiffs' goodwill (Compl. ¶¶ 39, 52, 63). The complaint does not provide a detailed technical description of how the accused products operate, focusing instead on allegations of copying.

IV. Analysis of Infringement Allegations

The complaint does not provide sufficient detail for a claim chart analysis. The infringement counts are pleaded in a conclusory fashion, stating that Defendants infringe the asserted patents by "making, using, selling, and/or offering to sell... goods, systems, methods, compositions, and/or services that are covered by one or more of the claims" of the ’680 and ’799 patents (Compl. ¶¶ 74, 82). The complaint does not map specific features of the accused BRBs to the elements of the asserted claims. The overarching infringement theory appears to be one of wholesale copying, relying on the factual allegations of misappropriation by an ex-employee to support the legal conclusion of infringement.

No probative visual evidence provided in complaint.

  • Identified Points of Contention:
    • Factual Questions: The primary point of contention will be evidentiary. Does an accused SBC brace actually contain the specific components required by the claims? For the '680 patent, this raises the question of whether the accused products incorporate "at least two separate bearing members" and an "air gap" between the bearings and the core. For the ’799 patent, this raises the question of whether the accused core member has a "varying cross-sectional area" that "progressively widen[s]" from its center. The complaint provides no direct evidence on these technical points.
    • Scope Questions: The dispute may evolve to address the scope of key claim terms. For instance, a question may arise as to whether the specific materials and structure of any friction-reducing layer in the accused product fall within the definition of "bearing members" as construed from the ’680 patent.

V. Key Claim Terms for Construction

  • Term: "bearing members" (’680 Patent, Claim 1)

    • Context and Importance: This term is the central novel element of the '680 patent's asserted claim, distinguishing it from prior art that used different materials for unbonding the core. The construction of this term will be critical to determining infringement, as it defines the specific structure required to separate the steel core from the rigid casing.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The claims do not specify a material for the "bearing members." The specification refers to preferred embodiments using UHMW polyethylene or Teflon but also contemplates "similar materials" and functionally describes the material as having "low compressibility" (’680 Patent, col. 6:35-40). This could support a construction based on function rather than specific materials.
      • Evidence for a Narrower Interpretation: A defendant may argue that the term should be limited to the disclosed embodiments: discrete, solid pads made of specific low-friction polymers. The patent's figures and detailed descriptions consistently depict these specific types of structures, rather than, for example, a coating or a different form of layer (’680 Patent, Fig. 3; col. 6:31-37).

  • Term: "progressively widening" (’799 Patent, Claim 1)

    • Context and Importance: This phrase defines the novel geometry of the core member in the '799 patent, which is key to controlling its deformation. Whether an accused product infringes will depend on whether its core shape meets this geometric limitation.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification explains the purpose of the shape is to control deformation by ensuring the center yields first (’799 Patent, col. 17:10-22). A plaintiff could argue that any shape that achieves this functional goal and is generally narrower at the center than at the ends "progressively widens."
      • Evidence for a Narrower Interpretation: The figures in the patent depict a smooth, continuous, and seemingly monotonic increase in width from the center outwards (’799 Patent, Fig. 10). A defendant could argue that "progressively" requires such a smooth and continuous profile and that a core with a stepped or irregular profile would not meet this limitation.

VI. Other Allegations

  • Indirect Infringement: The complaint primarily alleges direct infringement. While it includes boilerplate language regarding "allowing others to make, use, sell" the accused products, it does not plead specific facts to support a claim for induced or contributory infringement (Compl. ¶¶ 74, 82).
  • Willful Infringement: The complaint explicitly alleges that Defendants' infringement has been willful based on their "knowledge of the '680 Patent" and "'799 Patent" (Compl. ¶¶ 78, 86). While the source of this alleged knowledge is not explicitly stated, it is strongly implied to be pre-suit knowledge obtained by Defendant Hinchman during his prior employment with Plaintiff Core-Brace (Compl. ¶21, 28).

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

  • A central issue will be evidentiary and factual: Given the lack of technical detail in the complaint, can Plaintiffs establish through discovery that Defendants’ BRBs actually contain the structures recited in the asserted claims, such as the specific "bearing member" and "air gap" configuration of the ’680 patent and the "progressively widening" core geometry of the ’799 patent?
  • A second key issue will be one of claim construction: How broadly will the court define core claim terms? The case may turn on whether the term "bearing members" is construed functionally or limited to the specific polymer pads disclosed, and whether "progressively widening" requires a smooth, continuous profile or can read on other non-uniform shapes.
  • A final critical question concerns the interplay of the patent and non-patent claims: The complaint weaves a compelling narrative of trade secret theft and copyright infringement by a former employee. A key question is how this narrative, if substantiated, will influence the patent infringement analysis, potentially creating a "halo effect" that predisposes the fact-finder to see the accused products as direct copies that must therefore infringe.