DCT
2:23-cv-00918
Cemco LLC v. Kpsi Innovations Inc
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Cemco, LLC (California)
- Defendant: Kpsi Innovation, Inc. (Delaware); Serina Klein (Washington); Kevin Klein (Washington); and James A. Klein (Washington)
- Plaintiff’s Counsel: Trojan Law Offices
- Case Identification: 2:23-cv-00918, W.D. Wash., 06/23/2023
- Venue Allegations: Venue is alleged based on Defendant KPSI Innovation Inc.’s principal place of business being located in Bellevue, Washington, the individual defendants residing in the district, and a substantial part of the events giving rise to the claims occurring there.
- Core Dispute: Plaintiff alleges that Defendant’s fire-blocking head-of-wall products infringe four U.S. patents, asserting that Defendant is a successor entity continuing infringement that was the subject of multiple prior lawsuits and a permanent injunction.
- Technical Context: The technology concerns fire-blocking systems for "head-of-wall" joints in building construction, designed to prevent the spread of fire and smoke through gaps between wall assemblies and ceilings.
- Key Procedural History: The complaint describes an extensive litigation history involving the patents-in-suit and parties related to the defendants. This includes three prior lawsuits and a subsequent contempt proceeding, resulting in a permanent injunction (January 2020) against infringing the patents, a consent judgment of infringement (December 2019), a jury verdict of willful infringement against a predecessor company (May 2022), and a finding of contempt. Plaintiff alleges the current defendant, KPSI, was formed in February 2023 to continue the enjoined activities of these predecessor entities.
Case Timeline
| Date | Event |
|---|---|
| 2007-10-04 | Earliest Priority Date for all Patents-in-Suit |
| 2009-01-01 | BlazeFrame Industries, Ltd. formed by James A. Klein |
| 2010-03-23 | ’365 Patent Issued |
| 2010-10-19 | ’718 Patent Issued |
| 2012-03-20 | ’314 Patent Issued |
| 2012-04-10 | ’526 Patent Issued |
| 2012-01-01 | "First Lawsuit" over patent ownership initiated |
| 2015-10-02 | "First Lawsuit" settled; BlazeFrame assigns patents to CEMCO |
| 2017-06-25 | "Second Lawsuit" settled; BlazeFrame gives up license rights |
| 2017-06-27 | Safti-Seal, Inc. formed by James A. Klein |
| 2018-01-01 | "Third Lawsuit" filed against Safti-Seal for infringement |
| 2019-12-08 | "Third Lawsuit" settled; Safti-Seal stipulates to infringement |
| 2020-01-03 | Permanent injunction entered against James A. Klein and companies |
| 2020-03-05 | Seal4Safti, Inc. (S4S) formed |
| 2020-04-01 | S4S begins selling allegedly infringing products |
| 2020-10-19 | Contempt proceedings initiated in "Third Lawsuit" |
| 2020-11-13 | "Fourth Lawsuit" (DJ action) filed by S4S |
| 2022-02-16 | S4S and James A. Klein held in contempt in "Third Lawsuit" |
| 2022-05-01 | Jury in "Fourth Lawsuit" finds patents valid and willfully infringed by S4S |
| 2023-01-26 | Damages awarded against S4S in "Third Lawsuit" contempt proceeding |
| 2023-02-08 | KPSI Innovation, Inc. incorporated |
| 2023-06-23 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,681,365 - "Head-of-Wall Fireblock Systems and Related Wall Assemblies"
The Invention Explained
- Problem Addressed: The patent’s background section describes the technical challenge of sealing the "head-of-wall joint"—the linear gap between the top of a wall and the ceiling—to prevent fire and smoke from spreading. It notes that prior methods, such as stuffing mineral wool into the gap or using specially configured tracks, are often "labor intensive and thus expensive" ('365 Patent, col. 2:11-12).
- The Patented Solution: The invention provides a head-of-wall assembly featuring a metal header track with an "elongated intumescent strip" pre-affixed to one of its outer sidewalls. In a fire, the heat causes this strip to expand and seal the gap, thereby creating a fire barrier. This integrated design is intended to accommodate the dynamic movement of building structures (e.g., from seismic activity) while simplifying installation. ('365 Patent, Abstract; col. 4:40-52).
- Technical Importance: This approach integrated the fire-blocking material directly onto a standard construction component, offering a potentially more efficient and reliable method for firestopping dynamic joints compared to multi-step, manual field applications ('365 Patent, col. 2:38-49).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶66).
- Essential elements of independent claim 1 include:
- An elongated sheet-metal footer track.
- An elongated sheet-metal header track spaced from the footer track.
- An elongated intumescent strip affixed lengthwise on an outer sidewall surface of the header track.
- A plurality of sheet-metal studs positioned vertically between the footer and header tracks.
- Wallboard attached to the studs, with its upper interior surface in "linear contact" with the outer surface of the intumescent strip.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 7,814,718 - "Head-of-Wall Fireblocks"
The Invention Explained
- Problem Addressed: As a continuation of the '365 Patent, the '718 Patent addresses the same technical problem: the need for an effective, efficient, and less "labor intensive" method to seal dynamic head-of-wall joints against the passage of smoke and fire in buildings ('718 Patent, col. 2:13-14).
- The Patented Solution: The patent describes a fire-retardant head-of-wall assembly where a "heat expandable intumescent strip" is affixed to the outer sidewall of a header track. The core concept, illustrated in figures such as FIG. 3B, is that exposure to heat causes the strip to expand and fill the construction gap, forming a fire-resistant seal. ('718 Patent, Abstract; col. 4:44-53).
- Technical Importance: The invention provided a pre-engineered fire-blocking component that could be installed as part of the standard wall framing process, reducing the need for separate, manual firestopping steps that can be costly and prone to installation error ('718 Patent, col. 2:40-47).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶74).
- Essential elements of independent claim 1 are substantively similar to claim 1 of the '365 Patent and include:
- An elongated sheet-metal footer track.
- An elongated sheet-metal header track.
- An "elongated heat expandable intumescent strip" affixed to an outer sidewall of the header track.
- A plurality of sheet-metal studs.
- Wallboard attached to the studs, with an upper interior surface in linear contact with the intumescent strip.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 8,136,314 - "Head-of-Wall Fireblocks"
- Technology Synopsis: This patent, a continuation of the family, is directed to a header track for a stud wall assembly that includes a heat-expandable intumescent strip. The patent further specifies the composition of the intumescent strip, claiming a mixture that includes expandable graphite, a fire retardant, and an inorganic filler like clay, dispersed in an emulsion. ('314 Patent, Abstract; Claim 1).
- Asserted Claims: At least independent claim 1 (Compl. ¶82).
- Accused Features: The complaint alleges that KPSI’s fire-blocking head-of-wall products, which are used in building construction, infringe the patent (Compl. ¶¶45, 49, 82).
U.S. Patent No. 8,151,526 - "Head-of-Wall Fireblock Systems and Related Wall Assemblies"
- Technology Synopsis: This patent describes a fire-retardant head-of-wall assembly that incorporates an intumescent strip on the header track. The claims specify the composition of the strip, including expandable graphite and a fire retardant such as a C2-C8 alkyl diamine phosphate, and also claim the use of a protective outer polymeric coating on the intumescent strip. ('526 Patent, Abstract; Claims 2, 3, 10).
- Asserted Claims: At least independent claim 1 (Compl. ¶90).
- Accused Features: The infringement allegations are directed at KPSI’s fire-blocking head-of-wall products (Compl. ¶¶45, 49, 90).
III. The Accused Instrumentality
- Product Identification: The accused instrumentalities are identified as "fire-blocking head-of-wall products" manufactured, advertised, offered for sale, and sold by Defendant KPSI (Compl. ¶45, 47).
- Functionality and Market Context: The complaint alleges these products are used in building construction to block fire at the head-of-wall joint (Compl. ¶45). The narrative of the complaint strongly implies these products are the same as or immaterially different from products sold by predecessor entities Safti-Seal and S4S (Compl. ¶¶31, 46-47). The complaint alleges that S4S's "FRG products" were the same as the enjoined "Safti-Seal products," and that KPSI acquired the assets of S4S to continue selling these products (Compl. ¶¶31, 46). The infringement allegations suggest these products are assemblies that include a header track with an affixed intumescent material, which are installed in buildings (Compl. ¶¶49, 50).
IV. Analysis of Infringement Allegations
The complaint does not provide element-by-element infringement contentions or claim charts. The infringement theory is based on allegations that KPSI's products are functionally and structurally identical to products from predecessor entities (S4S and Safti-Seal) that have already been subject to a consent judgment of infringement and a jury verdict of willful infringement (Compl. ¶¶24, 38, 46-47). The following charts summarize the allegations for the lead patents based on this narrative theory.
No probative visual evidence provided in complaint.
’365 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| an elongated sheet-metal footer track; | KPSI's accused head-of-wall products are alleged to be assemblies that include a footer track for wall construction. | ¶¶49, 66 | col. 4:6-7 |
| an elongated sheet-metal header track confronting and vertically spaced apart from the footer track... | KPSI's products are alleged to include a sheet-metal header track with a web and sidewalls, positioned above the footer track. | ¶¶49, 66 | col. 4:7-8 |
| an elongated intumescent strip affixed lengthwise on at least one of the outer sidewall surfaces... | KPSI's products are alleged to incorporate an intumescent material affixed to an outer surface of the header track. | ¶¶49, 66 | col. 4:51-57 |
| a plurality of sheet-metal studs having upper and lower end portions, the studs being vertically positioned between the spaced apart and confronting footer and header tracks... | KPSI's products are alleged to be used in assemblies with vertical studs installed between the footer and header tracks. | ¶¶49, 66 | col. 4:9-14 |
| wallboard attached to at least one side of the plurality of studs, the wallboard having an elongated upper interior wallboard surface in linear contact with...the elongated intumescent strip. | KPSI's products are allegedly installed such that wallboard is placed in contact with the intumescent strip on the header track. | ¶¶49, 66 | col. 4:15-19 |
’718 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| an elongated sheet-metal footer track; | KPSI's accused head-of-wall products are alleged to be assemblies that include a footer track for wall construction. | ¶¶49, 74 | col. 4:10-11 |
| an elongated sheet-metal header track confronting and vertically spaced apart from the footer track... | KPSI's products are alleged to include a sheet-metal header track with a web and sidewalls, positioned above the footer track. | ¶¶49, 74 | col. 4:11-12 |
| an elongated heat expandable intumescent strip affixed lengthwise on at least one of the outer sidewall surfaces... | KPSI's products are alleged to incorporate a heat-expandable intumescent material affixed to an outer surface of the header track. | ¶¶49, 74 | col. 10:25-32 |
| a plurality of sheet-metal studs having upper and lower end portions... | KPSI's products are alleged to be used in assemblies with vertical studs installed between the footer and header tracks. | ¶¶49, 74 | col. 4:13-18 |
| wallboard attached to at least one side of the plurality of studs, the wallboard having an elongated upper interior wallboard surface in linear contact with...the elongated intumescent strip. | KPSI's products are allegedly installed such that wallboard is placed in contact with the intumescent strip on the header track. | ¶¶49, 74 | col. 10:41-48 |
- Identified Points of Contention:
- Scope Questions: The complaint notes that a predecessor's product (Safti-Seal) had an "additional so-called 'thermal barrier'" (Compl. ¶22). A potential point of contention is whether the feature on KPSI's product constitutes an "intumescent strip" as claimed, or if it is a structurally or functionally different component that falls outside the claim scope.
- Technical Questions: Given the extensive litigation history, the central technical question will be whether KPSI's products are materially different from the previously adjudicated infringing products sold by S4S and Safti-Seal. The complaint alleges there is no material difference (Compl. ¶¶31, 46-47); any defense will likely hinge on demonstrating a specific design change that avoids one or more claim limitations.
V. Key Claim Terms for Construction
The Term: "intumescent strip" ('365 Patent, Claim 1) / "heat expandable intumescent strip" ('718 Patent, Claim 1)
Context and Importance: This term defines the core active component of the invention. Its construction is critical because it determines what type of material and structure qualifies as the claimed fire-blocking element. Practitioners may focus on this term to dispute whether the accused component—potentially marketed as a "thermal barrier" (Compl. ¶22)—performs the specific function and possesses the properties required by the patents.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the strip functionally as a material that, "when subjected to heat, expands to form a heat-insulating barrier" ('365 Patent, col. 5:7-10). This language could support a construction that covers any material performing this heat-activated expansion and sealing function.
- Evidence for a Narrower Interpretation: The patent also discloses specific compositions, such as a "resinous emulsion that contains an expandable graphite, a fire retardant, and an optional inorganic intumescent filler" ('365 Patent, col. 5:8-11). A defendant could argue that the term should be limited to materials with such specific or similar compositions, rather than any material that simply expands with heat.
The Term: "in linear contact with and bearing against the outer strip surface" ('365 Patent, Claim 1)
Context and Importance: This limitation defines the required physical relationship between the wallboard and the intumescent strip, which is essential for creating the initial seal and allowing for dynamic movement. Infringement requires that the accused products be installed in a manner that creates this specific contact.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The plain meaning suggests a simple physical touching along a line. The purpose is to "maintain a smoke and fire seal at all times, especially during a ceiling 30 deflection or cycling event" ('365 Patent, col. 5:36-40), which supports a functional interpretation of "contact."
- Evidence for a Narrower Interpretation: The figures, such as FIG. 3A, show the top edge of the wallboard (17) pressed against the intumescent strip (34). A party might argue that "bearing against" requires a specific degree of force or pressure, or that any intermittent gaps or intermediate layers would defeat the "linear contact" requirement.
VI. Other Allegations
- Indirect Infringement: The complaint alleges KPSI induces infringement by "directing its customers or distributors to use its products in an infringing manner" and by "providing instructions showing how to use KPSI's products and components" (Compl. ¶¶50, 52).
- Willful Infringement: The complaint alleges that KPSI "knowingly, deliberately, intentionally, and willfully infringed" the patents (Compl. ¶54). The basis for this allegation is the extensive litigation history involving the patents and predecessor companies allegedly controlled by the same individuals. The complaint asserts KPSI was "aware of the Patents before it began selling its fire-blocking head-of-wall products" and specifically references prior findings of contempt and a jury verdict of willful infringement against predecessor S4S (Compl. ¶¶34, 38, 51).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of corporate continuity and intent: does the evidence establish that KPSI is, as the complaint alleges, a mere successor to the previously enjoined and adjudicated infringers (S4S and Safti-Seal), created to evade the consequences of prior litigation? The answer will be critical for determining liability for willful infringement and potential exposure to enhanced damages.
- A key evidentiary question will be one of technical identity: can KPSI demonstrate a material and non-infringing alteration in the design of its products compared to those of its predecessors? Absent such a showing, the prior findings of infringement against nearly identical products will present a significant hurdle for the defense.
- The case also raises a question of remedy: given the alleged pattern of conduct across multiple corporate forms to circumvent a permanent injunction, a court may need to consider whether an injunction against KPSI alone is sufficient, or if broader relief targeting the individuals allegedly directing the infringement is warranted.