DCT
1:20-cv-01594
Comeau v. SMP Specialy Metal Products Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Gary Comeau (Canada)
- Defendant: SMP Specialty Metal Products Inc. (Canada); 1140398 Ontario Ltd. (Canada); and John Cunerty (Canada)
- Plaintiff’s Counsel: Law Offices of Charles B. Molster, III PLLC; Noroozi PC
- Case Identification: 1:20-cv-01594, E.D. Va., 12/28/2020
- Venue Allegations: Plaintiff alleges venue is proper, and asserts personal jurisdiction over the foreign defendants based on their activities directed at the United States, including prosecuting the patents-in-suit at the USPTO, selling products to U.S. consumers through resellers, attending U.S. trade shows, and maintaining a U.S. shipping address in Lewiston, New York.
- Core Dispute: Plaintiff alleges he is the sole inventor of technology claimed in three U.S. patents for hot tub cover lifters and seeks to correct the patents' inventorship, which currently lists Defendant John Cunerty as either a co-inventor or the sole inventor.
- Technical Context: The technology involves mechanical lift assemblies that use levers and pneumatic springs to assist users in removing and replacing heavy, insulated hot tub covers.
- Key Procedural History: The complaint alleges two distinct inventions. The first, subject of the ’823 Patent, was allegedly conceived in 2014. The second, an improvement on the first and subject of the ’702 and ’665 Patents, was allegedly conceived in 2015. The ’665 Patent is a continuation of the application that resulted in the ’702 Patent, and they share a common specification.
Case Timeline
| Date | Event |
|---|---|
| 2014-01-01 | Plaintiff allegedly conceives of the invention in the ’823 Patent (approximate date) |
| 2014-07-01 | Plaintiff allegedly builds initial prototype of the ’823 Patent invention (approximate date) |
| 2014-11-03 | Priority Date for U.S. Patent No. 9,708,823 |
| 2015-11-01 | Plaintiff allegedly conceives of the invention in the ’702 and ’665 Patents (approximate date) |
| 2017-07-18 | U.S. Patent No. 9,708,823 Issues |
| 2017-09-01 | Plaintiff’s employment at SMP is terminated (approximate date) |
| 2018-10-26 | Priority Date for U.S. Patent Nos. 10,273,702 and 10,662,665 |
| 2019-04-30 | U.S. Patent No. 10,273,702 Issues |
| 2020-05-26 | U.S. Patent No. 10,662,665 Issues |
| 2020-12-28 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,708,823 - “Lift Assembly and Spa Including the Same,” Issued July 18, 2017
The Invention Explained
- Problem Addressed: The complaint alleges that existing hot tub cover lifters were deficient because they were "extremely bulky, extending laterally several feet from each wall of the spa" (Compl. ¶10). The patent background describes the general problem of moving heavy, insulated spa covers (U.S. Patent No. 9,708,823, col. 1:10-23).
- The Patented Solution: The invention is a more compact lift assembly that uses a lever arm coupled to a pneumatic spring to reduce the force a user must apply (Compl. ¶10). A key characteristic of this design, as alleged in the complaint and depicted in its annotated figures, is that the main lifter mechanism and the pneumatic spring have separate mounting points on the spa, requiring two distinct installation locations (Compl. ¶18). The detailed description explains the geometry of the lever arm and a "resilient spring" that urges the arm toward either the open or closed position depending on its orientation (’823 Patent, col. 5:50-col. 6:15).
- Technical Importance: This design allegedly offered a "slim, elegant lifter system that would extend only inches from the walls of the hot tub," improving aesthetics and space efficiency (Compl. ¶10).
Key Claims at a Glance
- The complaint alleges Plaintiff is the sole inventor of all claims of the ’823 Patent (Compl. ¶51). Independent claims 1 and 11 are foundational.
- Independent Claim 1 recites a lift assembly with elements including:
- a lever arm having a first portion for supporting a spa cover and a first end for pivotable coupling to a spa sidewall
- a pneumatic spring with a first end pivotally coupled to the lever arm and a second end
- the spring pivots about the second end as the lever arm moves
- the spring urges the lever arm toward the closed position when in the open position, and toward the open position when in the closed position
- Independent Claim 11 recites a similar lift assembly, but specifies it is a "single-acting pneumatic spring."
U.S. Patent No. 10,273,702 - “Lift Assembly for a Spa Cover,” Issued April 30, 2019
The Invention Explained
- Problem Addressed: The design in the ’823 Patent required installers to "carefully calculate and calibrate the spatial arrangement between the two mounting points" (for the lever arm and the spring), a process that could be difficult for amateur installers (Compl. ¶19).
- The Patented Solution: This invention is an improvement that simplifies installation by integrating the mounting points. It discloses a "unitary construction" where a "spring mounting portion" is connected to the "lever arm mounting portion," creating a single, integrated assembly that attaches to the spa at one location (Compl. ¶20; ’702 Patent, col. 8:5-14). An installer only needs to calibrate a single mounting point instead of two independent ones (Compl. ¶20).
- Technical Importance: By simplifying installation, this design allegedly made the product suitable for sale directly to end-users and amateur installers, expanding the potential market (Compl. ¶19, ¶22).
Key Claims at a Glance
- The complaint alleges Plaintiff is the sole inventor of all claims of the ’702 Patent (Compl. ¶58). Independent claims 1 and 17 are foundational.
- Independent Claim 1 recites a lift assembly with elements including:
- a spa mounting assembly having a lever arm mounting portion connected to a spring mounting portion
- a lever arm with a pivoting connection to the lever arm mounting portion
- a pneumatic spring with a proximal end having a pivoting connection to the spring mounting portion and a distal end having a pivoting connection to the lever arm
- The complaint does not reserve the right to assert dependent claims.
U.S. Patent No. 10,662,665 - “Lift Assembly for a Spa Cover,” Issued May 26, 2020
Technology Synopsis
- Patent Identification: U.S. Patent No. 10,662,665, “Lift Assembly for a Spa Cover,” Issued May 26, 2020.
- Technology Synopsis: The ’665 Patent is a continuation of the application that issued as the ’702 Patent and shares a common specification (Compl. ¶66). It covers the same alleged improvement: a hot tub cover lifter with a unitary mounting construction that integrates the attachment points for the lever arm and the pneumatic spring to simplify installation (Compl. ¶¶19-20).
- Asserted Claims: The complaint alleges Plaintiff is the sole inventor of all claims (Compl. ¶68). The patent includes independent claims 1, 13, 17, and 18.
- Accused Features: The allegations concern the inventorship of the patented technology itself, which the complaint states is commercially embodied in the "Visionlift Boomerang" product (Compl. ¶37).
III. The Accused Instrumentality
Product Identification
The complaint identifies two commercial products sold by Defendant SMP that allegedly embody the disputed inventions: the "Visionlift" and the "Visionlift Boomerang" (Compl. ¶14, ¶37).
Functionality and Market Context
The complaint alleges that the "Visionlift" product embodies the invention of the ’823 Patent, featuring a design with two separate mounting points for the lifter and the pneumatic spring (Compl. ¶¶14, 18). The "Visionlift Boomerang" allegedly embodies the improved invention of the ’702 and ’665 Patents, featuring a unitary construction with a single mounting location (Compl. ¶37, ¶¶19-20). The complaint includes an annotated figure from the ’702 patent, described as illustrating the prior art ’823 design, which shows a primary mounting point circled in green and a distinct secondary mounting point for the spring circled in red (Compl. p. 7, ¶18). A second annotated figure, representing the invention of the ’702 and ’665 patents, shows a single integrated mounting point and explicitly notes "No secondary mounting point," highlighting the alleged inventive improvement (Compl. p. 8, ¶21). The complaint asserts that these products have been "commercially successful" and are "recognized as innovative within the pool and spa industry" (Compl. ¶37).
IV. Analysis of Inventorship Allegations
U.S. Patent No. 9,708,823 Inventorship Allegations
The following table summarizes Plaintiff's allegations of how he solely conceived the invention claimed in the ’823 Patent.
| Claim Element (from Independent Claim 1) | Allegations of Conception by Plaintiff | Complaint Citation | Patent Citation |
|---|---|---|---|
| a lever arm having a first portion for supporting a spa cover, and a first end for pivotable coupling to a sidewall of a spa | Plaintiff allegedly conceived of a "slim, elegant lifter system" after observing a bulky competing product. | ¶10 | col. 5:6-14 |
| a pneumatic spring comprising a pneumatic cylinder and a piston rod | The alleged conception included using a "pneumatic spring coupled to a lever to lessen the force a user must apply." | ¶10 | col. 6:21-23 |
| the first end of the pneumatic spring pivotally coupled to the lever arm | Plaintiff allegedly built an initial prototype "using available scrap metal and parts" that embodied his complete design. | ¶11 | col. 6:50-55 |
| the spring... urges the lever arm to rotate toward the closed position, and... toward the open position | Plaintiff allegedly refined the invention for mass production, which would require configuring the geometry to provide force in both directions. The complaint also alleges he made a video showing its "opening and closing operations in action." | ¶12, ¶13 | col. 6:5-15 |
U.S. Patent No. 10,273,702 Inventorship Allegations
The following table summarizes Plaintiff's allegations of how he solely conceived the invention claimed in the ’702 Patent.
| Claim Element (from Independent Claim 1) | Allegations of Conception by Plaintiff | Complaint Citation | Patent Citation |
|---|---|---|---|
| a spa mounting assembly that in use is rigidly connectable to a spa | Plaintiff allegedly developed the new design to be incorporated into the existing "Visionlift" product line. | ¶22 | col. 10:6-10 |
| the spa mounting assembly having a lever arm mounting portion connected to a spring mounting portion | Plaintiff allegedly conceived of a "unitary construction" that did not require a separate mounting point for the spring, instead connecting the spring mount directly to the lifter's primary mount. | ¶20 | col. 8:5-14 |
| the pneumatic spring proximal end portion having a pivoting connection to the spring mounting portion | The alleged solution involved a "spring mounting portion that connected directly to the lifter's primary mounting point," eliminating the need for a second, separate mount on the spa wall. | ¶20 | col. 8:30-40 |
| the pneumatic spring distal end portion having a pivoting connection to the lever arm | Plaintiff allegedly documented his invention in drawings "substantively equivalent to those eventually included as figures in the '702 and '665 Patents." | ¶21 | col. 8:41-43 |
Identified Points of Contention
- Factual Questions: The case presents a factual dispute over who conceived of the claimed inventions. A primary question will be what contemporaneous evidence (e.g., drawings, prototypes, emails, witness testimony) each party can produce to corroborate their claims regarding conception and reduction to practice for each distinct invention.
- Contribution Questions: The legal standard for joint inventorship requires contribution to the conception of at least one claim. A key point of contention will be whether Defendant Cunerty made any contribution to the "definite and permanent idea of the complete and operative invention." The complaint's position is that he made no contribution to any claim of any of the patents (Compl. ¶9, ¶17, ¶25). The defense may argue that he provided contributions that meet the standard for joint inventorship.
V. Key Claim Terms for Construction
For U.S. Patent No. 10,273,702
- The Term: "a lever arm mounting portion connected to a spring mounting portion"
- Context and Importance: This limitation is the core of the alleged improvement distinguishing the ’702/’665 patents from the ’823 patent. The dispute hinges on whether Plaintiff solely conceived of integrating these two mounting portions into a single unit to solve the installation problem he identified. The construction of this phrase will be central to defining the boundary between the two alleged inventions and determining who is the proper inventor of the second, improved design.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself does not specify the manner of connection, which could theoretically allow for a less-integrated construction.
- Evidence for a Narrower Interpretation: The specification repeatedly contrasts the invention with prior art requiring a "separate wall mounting bracket" for the spring (e.g., ’702 Patent, col. 7:37-40). The summary of the invention explicitly describes the lever arm mounting portion as being "connected to the spring mounting portion" to form a unified "spa mounting assembly" (e.g., ’702 Patent, col. 2:25-26, col. 8:5-14). This context suggests the term requires a unitary construction that mounts to the spa at a single location.
VI. Other Allegations
- Correction of Inventorship and Ownership: The complaint seeks to correct inventorship under 35 U.S.C. § 256, alleging that the omission of Plaintiff as an inventor and the inclusion of Defendant Cunerty was erroneous and occurred without deceptive intent on Plaintiff's part (Compl. ¶52, ¶59, ¶69). In addition to correcting inventorship, Plaintiff seeks a declaration that he is the rightful owner of the ’702 and ’665 Patents, a legal consequence of being the sole inventor (Compl. ¶75, ¶77). The complaint pleads in the alternative that, should the court find he is not the sole inventor, he should be added as a joint inventor (Compl. ¶62, ¶72).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of evidentiary proof: What corroborating evidence, beyond party testimony, can be presented to establish the complete conception of the claimed inventions by a specific date, and can the Plaintiff provide the clear and convincing evidence required to overcome the presumption that the named inventors on an issued patent are correct?
- A key legal question will be the threshold for inventorship: Will the evidence demonstrate that Defendant Cunerty's involvement, if any, rose to the level of contributing to the conception of at least one element of a patent claim, thereby satisfying the legal standard for joint inventorship, or will the facts support the Plaintiff's claim of sole conception?