DCT
1:15-cv-16143
Hafco Foundry Machine Co Inc v. GMS Mine Repair Maintenance Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Hafco Foundry and Machine Company, Incorporated (New Jersey)
- Defendant: GMS Mine Repair And Maintenance, Inc. (Maryland)
- Plaintiff’s Counsel: Bowles Rice LLP
- Case Identification: Hafco Foundry and Machine Company, Incorporated v. GMS Mine Repair And Maintenance, Inc., 1:15-cv-16143, S.D. W. Va., 12/15/2015
- Venue Allegations: Venue is based on Defendant's alleged offers for sale at a trade show in the district, sales to customers for use in the district, and maintenance of a regular and established place of business within the district.
- Core Dispute: Plaintiff alleges that Defendant’s rock dust blowers infringe a design patent covering the ornamental appearance of Plaintiff's own rock dust blower.
- Technical Context: Rock dust blowers are used in the mining industry to apply non-combustible limestone dust to coal mine surfaces, a critical safety procedure to mitigate the risk of coal dust explosions.
- Key Procedural History: Plaintiff alleges that it had a distribution agreement with an affiliate of the Defendant for Plaintiff's patented product, which was terminated prior to the lawsuit. The complaint asserts that during this relationship, Defendant was made aware of the patent-in-suit, a fact which forms the basis for the willfulness allegation.
Case Timeline
| Date | Event |
|---|---|
| 2011-10-18 | U.S. Design Patent No. D681,684S Priority Date (Filing Date) |
| 2013-05-07 | U.S. Design Patent No. D681,684S Issued |
| 2014 | Distribution Agreement between Hafco and GMS affiliate initiated |
| Early May 2015 | Distribution Agreement terminated |
| 2015-09-16 | GMS allegedly offered infringing blowers for sale at Bluefield Coal Show |
| 2015-12-15 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D681,684S - "Rock Dust Blower"
- Patent Identification: U.S. Design Patent No. D681,684S, "Rock Dust Blower," issued May 7, 2013.
The Invention Explained
- Problem Addressed: While the patent does not explicitly state a problem, its purpose is to protect a new, original, and ornamental design for a rock dust blower, distinguishing it visually in the marketplace (D681,684S Patent, Claim 1). The underlying functional context is equipment used for applying non-combustible rock dust to prevent explosions in coal mines (Compl. ¶8).
- The Patented Solution: The patent claims the specific visual appearance of a rock dust blower, not its mechanical function (D681,684S Patent, Claim 1). The claimed design, as shown in solid lines in the patent's figures, consists of a generally cylindrical body with a flat-topped lid and a central knob, two distinct circumferential ribs on the body, and a stand constructed of bent metal rods (D681,684S Patent, Figs. 1-4). The patent explicitly disclaims certain functional elements, such as the bottom discharge nozzle, by rendering them in broken lines, indicating they are not part of the protected design (D681,684S Patent, Description; Fig. 5).
- Technical Importance: The design provides a unique ornamental appearance for a piece of industrial safety equipment used in mining operations (Compl. ¶8).
Key Claims at a Glance
- The single claim of the design patent is asserted: "The ornamental design for a rock dust blower, as shown and described." (D681,684S Patent, Claim 1; Compl. ¶¶ 21-22).
- The core ornamental features that constitute the claimed design include:
- The overall visual impression of the rock dust blower.
- A cylindrical container body.
- Two horizontal, circumferential ribs on the body.
- A removable lid with a defined lip and a central knob.
- A stand assembly formed from bent rods.
- Specific front and rear port features shown in solid lines.
III. The Accused Instrumentality
Product Identification
- The accused products are identified as the "GMS Blowers" (Compl. ¶14).
Functionality and Market Context
- The complaint alleges the GMS Blowers are rock dust blowers that operate using compressed air for the application of non-combustible dust in coal mines, the same function as Plaintiff's product (Compl. ¶8). Defendant allegedly began advertising, offering to sell, and selling these blowers after the termination of a prior agreement to distribute Plaintiff's patented product (Compl. ¶¶ 13-14). An alleged offer for sale occurred at the Bluefield Coal Show on September 16, 2015, where marketing literature for the GMS Blowers was distributed (Compl. ¶14).
Visual Evidence
- No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The standard for design patent infringement is whether an "ordinary observer," familiar with the prior art, would be deceived into believing the accused design is the same as the patented design. The complaint alleges that the GMS Blowers embody the design claimed in the ’684 Patent.
D681,684S Infringement Allegations
| Claim Element (from Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a rock dust blower, as shown and described, which encompasses the overall visual appearance created by the combination of its constituent features. | Defendant is alleged to be making, offering for sale, and selling "GMS Blowers" that have a design embodying the ornamental design shown in the ’684 Patent. | ¶22 | Claim 1; Figs. 1-5 |
Identified Points of Contention
- Factual Question: The central issue for infringement is a factual one: what is the actual ornamental appearance of the accused GMS Blower? The resolution of the case will depend on a visual comparison between the GMS Blower and the design claimed in the ’684 Patent.
- Scope Questions: The infringement analysis will focus on the overall visual impression, not on any single feature in isolation. A key question is whether the combination of features in the accused GMS Blower creates an appearance that is substantially the same as the patented design, such that an ordinary observer would be deceived.
V. Key Claim Terms for Construction
In design patent cases, the "claim" is typically understood to be the drawings, and formal construction of verbal terms is uncommon. The analysis instead focuses on the scope of the design as depicted in the figures, particularly the distinction between claimed subject matter (solid lines) and unclaimed environment (broken lines).
- The Term: The scope of the claimed design as a whole.
- Context and Importance: The scope of the protected design is defined by what is shown in solid lines in the patent figures. The distinction between solid and broken lines is critical, as only the features in solid lines are protected and form the basis for the infringement comparison.
- Intrinsic Evidence for Interpretation:
- Evidence for Scope: The scope of protection covers the specific combination of the cylindrical body, the two ribs, the lid shape, the stand structure, and the front/rear ports, all as depicted in solid lines in Figures 1-5 (D681,684S Patent, Figs. 1-5).
- Evidence for Limitation: The patent explicitly limits the scope of the design by stating that "The broken lines depicting structural elements are included for the purpose of illustrating portions of the rock dust blower which form no part of the claimed design." (D681,684S Patent, Description). This specifically excludes from the claim scope elements such as the bottom discharge nozzle assembly shown in Figure 5 (D681,684S Patent, Fig. 5).
VI. Other Allegations
- Indirect Infringement: The complaint's prayer for relief includes a request to enjoin inducement of infringement (Compl. p. 5, C). However, the factual allegations within the body of the complaint are directed at Defendant's own acts of making, offering for sale, and selling the accused product, which constitute direct infringement (Compl. ¶22). The complaint does not plead specific facts to support a claim for indirect infringement, such as active steps taken by Defendant to encourage or aid third parties in infringing the patent.
- Willful Infringement: The complaint alleges that Plaintiff informed Defendant of the ’684 Patent and its coverage of the Hafco rock dust blower during the term of a prior distribution agreement between Plaintiff and a GMS affiliate (Compl. ¶16). The complaint further alleges that despite this pre-suit knowledge, Defendant proceeded to infringe "without a good faith belief that the Rock Dust Blower Patent is invalid or not infringed," which forms the basis for the willfulness claim (Compl. ¶¶ 16, 17, 23).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of visual comparison: Is the overall ornamental design of the accused GMS Blower "substantially the same" as the design claimed in the ’684 Patent from the perspective of an ordinary observer? The outcome will depend entirely on the visual evidence of the accused product, which is referenced in the complaint but not provided.
- A key question for damages will be willfulness: Does the evidence support the allegation that Defendant had pre-suit knowledge of the patent and its alleged applicability to the accused product, stemming from the parties' prior business relationship? A finding of willful infringement could expose Defendant to enhanced damages.