DCT
3:07-cv-00411
Langeman Mfg Ltd v. Pinnacle West Enterprises Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Langeman Manufacturing, Ltd. (Canada)
- Defendant: Pinnacle West Enterprises, Inc., et al. (Canada, USA)
- Plaintiff’s Counsel: Vinson & Elkins L.L.P.
- Case Identification: 3:07-cv-00411, W.D. Wis., 07/30/2007
- Venue Allegations: Venue is based on allegations that Defendants conduct business and sell or ship infringing products into the Western District of Wisconsin through established distribution channels.
- Core Dispute: Plaintiff alleges that Defendants’ filament-bearing tapes, and the methods of using them, infringe patents related to an edge-trimming tape technology for use with spray-on coatings.
- Technical Context: The technology involves an adhesive tape with an embedded cutting filament, designed to create a clean, precise edge on coatings like spray-on truck bed liners, thereby avoiding the need for knives that can damage the underlying surface.
- Key Procedural History: The asserted patents are part of a family sharing a common specification, with U.S. Patent No. 6,875,469 and U.S. Patent No. 7,014,900 stemming from the application that led to U.S. Patent No. 6,284,319. The complaint alleges Defendants had knowledge of the patents-in-suit prior to the litigation.
Case Timeline
| Date | Event |
|---|---|
| 1996-01-01 | Plaintiff's "WireTrim®" tape first introduced (approx.) |
| 1996-02-28 | Earliest Priority Date for all asserted patents |
| 2001-09-04 | U.S. Patent No. 6284319 Issues |
| 2005-04-05 | U.S. Patent No. 6875469 Issues |
| 2006-03-21 | U.S. Patent No. 7014900 Issues |
| 2007-07-30 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,284,319 - "Edge Trimming Tape and Method of Manufacture," Issued September 4, 2001
The Invention Explained
- Problem Addressed: The patent describes the difficulty of trimming durable, spray-on coatings, such as polyurethane liners for truck beds. The conventional method of using a knife to cut the liner post-application frequently results in scoring or scratching the underlying painted surface, requiring costly and time-consuming repainting (Compl. ¶27; ’319 Patent, col. 3:41-52).
- The Patented Solution: The invention is a method using a masking tape that incorporates a "thin, strong filament" along its edge. This tape is applied to a surface to define the boundary for the coating. After the coating is applied over the tape and has partially cured, the exposed end of the filament is pulled, cutting cleanly through the coating from underneath. This process creates a precise edge without any blade ever touching the vehicle’s surface (’319 Patent, Abstract; col. 4:59-65).
- Technical Importance: The technology aimed to provide a faster, more precise, and non-damaging method for finishing spray-on coatings compared to manual cutting, improving the quality of the final product and avoiding inadvertent damage (Compl. ¶28-29).
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claims 2-4 (Compl. ¶43).
- Independent Claim 1 is a method claim with the following essential elements:
- Applying to a surface a "masking material" with a first and second surface, between which a "filament" is disposed, to define a coating edge.
- Applying a "coating material" to the surface.
- Allowing the coating to dry or cure until it has "sufficient strength to hold a cut edge."
- Drawing the filament through the masking material and the coating to cut the coating.
U.S. Patent No. 6,875,469 - "Edge Trimming Tape and Method of Manufacture," Issued April 5, 2005
The Invention Explained
- Problem Addressed: As a continuation of the same inventive effort, this patent addresses the same problem identified in the '319 Patent: the risk of damaging a vehicle's surface when trimming spray-on liners with a knife (’469 Patent, col. 3:41-52).
- The Patented Solution: The patent describes a method of coating a vehicle surface that uses an "elongated filament bearing masking tape." This tape comprises a substrate with an adhesive surface, a filament adhered adjacent to an edge, and a masking material. The method involves applying the tape, coating over it, and pulling the filament to trim the coating, consistent with the solution in the parent patent (’469 Patent, col. 8:15-41).
- Technical Importance: This patent further protects the application of the core trimming technology, specifically in the context of coating vehicle surfaces like truck beds, which the complaint identifies as a key market (Compl. ¶25; ’469 Patent, col. 2:11-15).
Key Claims at a Glance
- The complaint asserts claims 1-37 (Compl. ¶43). Independent claims include 1 and 15.
- Independent Claim 1 is a method claim with the following essential elements:
- Applying an "elongated filament bearing masking tape" to a vehicle surface, where the tape comprises (i) an adhesive substrate, (ii) a filament adhered to the substrate to define an edge, and (iii) a masking material adhered to the substrate.
- Applying a coating material over the tape's edge.
- Allowing the coating to at least partially dry or cure.
- Drawing the filament through the coating to cut it.
- Independent Claim 15 adds the element of applying a "second masking material" to the first masking material before applying the coating.
U.S. Patent No. 7,014,900 - "Edge Trimming Tape and Method of Manufacture," Issued March 21, 2006
Technology Synopsis
This patent, sharing a common specification with the other asserted patents, claims a product: a coated vehicle surface. The product comprises the vehicle surface itself, an applied filament-bearing masking tape with specific structural characteristics, and a partially cured coating applied over the tape, creating a finished article where the filament remains available to be pulled to trim the coating (’900 Patent, Abstract; col. 8:19-42).
Asserted Claims
Claims 1-12 are asserted, which includes independent claims 1, 8, and 9 (Compl. ¶43).
Accused Features
The complaint alleges that the use of Defendants' filament-bearing tapes according to their instructions for applying vehicle liners results in the creation of the infringing coated vehicle surface (Compl. ¶43, 58, 73).
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are the "filament-bearing tape," also referred to as "wire and thread tape," manufactured, sold, or used by the various Defendants, and the methods for using these tapes (Compl. ¶35, 37, 49).
Functionality and Market Context
The complaint alleges the accused tapes are used to trim spray-on liners for vehicles, such as truck beds (Compl. ¶25, 67). The tape is applied to a surface to define an edge, a coating is sprayed over it, and the embedded filament is then pulled to cut the coating and create a clean line (Compl. ¶25). The complaint alleges that Plaintiff pioneered this technology with its WireTrim® product and that Defendants' products are direct competitors in the same market (Compl. ¶24, 26, 30). For example, a 1996 newsletter from Defendant Ultimate Linings allegedly referred to Plaintiff's WireTrim as "One Hot Item!!" (Compl. ¶30). The complaint includes a screenshot from Defendant Pinnacle's website showing a "step-by-step" procedure for using its tape to apply a vehicle liner (Compl. ¶38, Exhibit G). This exhibit details how to apply the tape and trim the liner, which is probative of the accused functionality.
IV. Analysis of Infringement Allegations
The complaint does not contain a formal claim chart. The following tables summarize the infringement allegations for the lead patents based on the complaint's narrative descriptions.
'319 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| (a) applying to the surface to be coated a masking material ... [with] a filament | Defendants allegedly sell filament-bearing tape and instruct users to apply it to a surface to define the edge of a coating area (Compl. ¶37, 38). An online procedure from Defendant Pinnacle shows this application step (Compl. ¶38, Exhibit G). | ¶38, ¶43 | col. 8:32-39 |
| (b) applying coating material to the surface | Defendants allegedly instruct users to apply a liner material over the tape (Compl. ¶38, 67). | ¶38, ¶43 | col. 8:40 |
| (c) allowing the coating material to dry or cure until it obtains sufficient strength | The described process of trimming a cured or semi-cured liner implies a waiting period for the material to set before cutting (Compl. ¶25). | ¶25, ¶43 | col. 8:41-43 |
| (d) drawing the filament through the ... coating to cut the coating | The core purpose of the accused product is to use the embedded filament to cut through the applied liner, creating a clean edge without a knife (Compl. ¶25). The complaint points to an advertisement from Defendant Trim Tape for trimming vehicle liners as evidence (Compl. ¶67, Exhibit K). | ¶25, ¶43 | col. 8:44-46 |
'469 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a. applying to said vehicle surface an elongated filament bearing masking tape comprising: i. an elongated substrate having at least one adhesive surface... | The accused product is an adhesive tape that Defendants allegedly instruct users to apply to a vehicle surface (Compl. ¶38, 67). | ¶38, ¶43 | col. 8:15-20 |
| ii. an elongated filament releasably adhered to said substrate adjacent to an elongated edge... | The accused tapes are alleged to be "filament-bearing" or "wire and thread tape," with the filament positioned to create a trimmed edge (Compl. ¶25, 35). | ¶25, ¶35, ¶43 | col. 8:21-25 |
| iii. an elongated masking material adhered to said substrate on a surface opposite... | The body of the accused tape itself functions as the masking material to protect the underlying surface from the coating (Compl. ¶25). | ¶25, ¶43 | col. 8:26-30 |
| b. applying said coating material to said vehicle surface and over said elongated edge of said substrate; | Defendants' instructions allegedly describe applying a liner over the tape (Compl. ¶38). A screenshot from Defendant Rhino Linings' dealer website is provided as evidence of how dealers can obtain information on tape usage (Compl. ¶53, Exhibit H). | ¶38, ¶43, ¶53 | col. 8:31-32 |
| c. allowing said coating material to at least partially dry or cure; and | The described process of trimming after application implies a curing or drying step (Compl. ¶25). | ¶25, ¶43 | col. 8:33-34 |
| d. drawing said filament through said coating material to cut the coating material... | The intended function of the accused tape is to have its filament pulled through the liner to achieve a clean cut (Compl. ¶25). | ¶25, ¶43 | col. 8:35-41 |
Identified Points of Contention
- Technical Questions: A factual question for the method claims is what evidence exists that defendants' customers perform all claimed steps. The complaint relies heavily on inducement theories supported by defendants' online instructions and marketing, raising the question of how specific and complete those instructions are in teaching every element of the claims.
- Scope Questions: The case may turn on the construction of key terms. For instance, does the specific construction of the defendants' tapes, described as "wire and thread tape" (Compl. ¶35), meet the structural limitations of the claimed "masking material" in the '319 Patent, which the specification illustrates as a folded structure ('319 Patent, Fig. 1A-1F)?
V. Key Claim Terms for Construction
The Term: "filament"
- Context and Importance: The definition of the cutting element is central to infringement. The dispute may focus on the material, profile, and strength required by this term. Practitioners may focus on this term because the complaint describes the accused products as both "wire and thread tape," suggesting a potential distinction from the patent's primary embodiment of a metal wire (Compl. ¶35).
- Intrinsic Evidence for a Broader Interpretation: The specification states, "The filament could also be a glass or synthetic fiber, or a strand, consisting of multiple twisted or braided filaments of various materials, profiles and sizes" (’319 Patent, col. 4:34-37).
- Intrinsic Evidence for a Narrower Interpretation: The preferred embodiments and detailed descriptions repeatedly refer to "wire," specifically "A common music wire" (’319 Patent, col. 4:16), and claim 4 specifies a "metal wire." This may suggest that "filament" should be construed more narrowly in the context of the invention.
The Term: "allowing the coating material to dry or cure until it obtains sufficient strength to hold a cut edge"
- Context and Importance: This limitation defines the required state of the coating before the cutting step. Infringement of this method step depends on a specific, and potentially subjective, material condition.
- Intrinsic Evidence for a Broader Interpretation: The language itself is functional, suggesting any state of cure that achieves the result of holding a cut edge would suffice.
- Intrinsic Evidence for a Narrower Interpretation: The specification discusses the importance of having "enough green strength" and being "form-retaining" (’319 Patent, col. 4:6-8). A defendant could argue this implies a specific window of partial curing that must be proven, and that simply waiting an arbitrary time is insufficient to meet the limitation.
VI. Other Allegations
Indirect Infringement
The complaint alleges both contributory and induced infringement (Compl. p. 7, fn. 2). The factual basis for inducement is that Defendants allegedly sell the specialized tape and provide instructions, advertisements, and "step-by-step" procedures via their websites, which instruct customers on how to perform the patented methods (Compl. ¶38, 43, 53, 67).
Willful Infringement
Willfulness allegations are made against all Defendants and are based on alleged pre-suit knowledge of the patents-in-suit (Compl. ¶46, 61). The complaint repeatedly asserts that each Defendant "had knowledge of the '319 patent," "'469 patent," and "'900 patent" prior to the filing of the complaint, and in some cases, alleges knowledge of related foreign patent applications (Compl. ¶39-42, 54-57).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim scope and construction: can the term "filament," as used in the claims, be broadly construed to cover both wire and thread, consistent with the specification's inclusive language, or will it be narrowed to the metal wire emphasized in the patent's primary embodiments? The resolution will be critical for determining literal infringement by the "wire and thread" tapes.
- A key evidentiary question will concern inducement: will the Plaintiff be able to demonstrate that the Defendants' marketing materials and online instructions were sufficiently specific to show an affirmative intent to encourage their customers to perform every step of the asserted method claims, including the subjective step of allowing the coating to cure to a specific state?
- The viability of the willfulness claim will likely depend on the nature of the alleged pre-suit knowledge. The central question will be whether the Plaintiff can prove not only that Defendants were aware of the patents' existence, but that they knew or should have known that their actions constituted infringement.