United States District Court, D. Connecticut
RULING ON MOTION FOR SUMMARY JUDGMENT
A. BOLDEN UNITED STATES DISTRICT JUDGE.
Tech, LLC (“RMH”) and Metal Roof Innovations,
Ltd. (“MRI”) (collectively
“Plaintiffs”) have sued PMC Industries, Inc.
(“PMC” or “Defendant”), alleging
patent infringement. PMC asserts two counterclaims seeking a
declaratory judgment of non-infringement or invalidity.
has moved for summary judgment.
reasons that follow, the motion is DENIED.
FACTUAL AND PROCEDURAL BACKGROUND
RMH develops, manufactures, and sells mounting devices for
metal roofs. Compl. ¶ 11, ECF No. 1. RMH owns U.S.
Patent No. 6, 470, 629 (the “Haddock Patent”), of
which MRI is a licensee. Id. ¶¶
1-2. PMC offers and sells the COLOR Snap snow
retention system, the accused infringing product.
Id. ¶ 3.
both parties produce mounting adapter devices for metal roofs
that operate by securing cross members, thereby allowing
easier installation and removal of snow retention systems.
The Haddock Patent dates to 2002. See Haddock
Patent, Def.'s Statement of Material Facts ¶ 1
(“Def.'s SMF”), Ex. 1, ECF No. 138-1.
The Stearns Patent
Stearns Patent preceded the Haddock Patent. On March 11,
1997, the U.S. Patent and Trademark Office issued U.S. Patent
No. 5, 609, 326 (the “Stearns Patent”) for an
“Impervious Membranous Roof Snow Fence System” to
Brian and Alan Stearns. Stearns Patent at 1, Def.'s SMF,
Ex. 10, ECF No. 138-10.
abstract of the Stearns Patent provides in relevant part:
An impervious membranous roof snow fence system consisting of
a plurality of flat six sided mounting plates affixed through
membranous roofing to a roof deck below. The plates in two
embodiments have vertical splines to be received by
compartments or sleeves in mounting blocks or in another
embodiment threaded vertical posts to be received by vertical
holes in mounting blocks where the blocks fit over membranous
patches fitted over the plates and fully sealed to the
roofing where such patches have slits or holes in them to
accommodate the spines or posts. The blocks once fastened to
the plates have fastened to them in turn, porous fence flags
that support horizontal fence pieces from which there hang
vertical fence pieces.
Id. It is designed to prevent snow from cascading
off roofs. Id. ¶ 9.
The Haddock Patent
October 29, 2002, the U.S. Patent and Trademark Office issued
the Haddock Patent for a Mounting System and Adaptor Clip,
naming Robert Haddock, the primary owner of RMH and MRI, as
the inventor. Haddock Patent at 1.
abstract of the Haddock Patent provides in relevant part:
An apparatus for securing members to a surface. The apparatus
includes a mounting clamp, a mounting adaptor, a panel
support member and a fastener. The panel support member and
the mounting adaptor are slidably interconnected to one
another. The mounting adaptor is fixedly interconnected to
the mounting clamp using the fastener . . . . The panel
support member may be adapted to receive a panel.
15 of the Haddock Patent reads:
15. A mounting system that comprises:
first and second mounting clamps;
first and second mounting adaptors, wherein each of said
first and second mounting adaptors comprises first and second
mounting adaptor portions, wherein said first mounting
adaptor portion of said first mounting adaptor is disposed on
said first mounting clamp, and wherein said first mounting
adaptor portion of said second mounting adaptor is disposed
on said second mounting clamp;
first and second fasteners that anchor said first adaptor
portion of said first and second mounting adaptors,
respectively, to said first and second mounting clamps,
a cross member; and
first and second means for detachably interconnecting said
cross member with said second adaptor portion of said first
and second mounting adaptors, respectively.
Id. at 10.
claim that the COLOR Snap system infringes the Haddock
The COLOR Snap Product
2016, Defendant introduced the COLOR Snap system to the
market. Def.'s Answer at 8. The COLOR Snap system
allegedly makes installing snow-retention systems on standing
seam metal roofs “easier and quicker, ” and
“was independently developed and is significantly
different than Plaintiffs' patented system, ”
id, an allegation Plaintiffs deny. Pls.'
Answer/Reply to Am. Answer to Compl., Countercl.
(“Pls.'s Answer”) at 2, ECF No. 48.
The Kovacs Patent
September 2016, Plaintiff filed for a patent for a
“retention apparatus, system and method” with
Tamas Kovacs as inventor and PMC as assignee. Kovacs Patent
at 1, Def.'s SMF, Ex. 4, ECF No. 138-4. On December 26,
2017, the U.S. Patent and Trademark Office issued U.S. Patent
No. 9, 850, 661 (the “Kovacs Patent”).
abstract of the Kovacs Patent reads in relevant part:
A retention apparatus, system and method for attaching a
cross member with an anchor assembly to a latch assembly of a
top block and clamp assembly secured to a wall, roof or other
structure. . . . According to the exemplary embodiment, the
retention apparatus and system may be secured to a standing
seam on a metal roof to use an ice flag for retaining snow
and ice between standing seams.
Persons of Ordinary Skill in the Art
party has offered expert opinions regarding whether the
accused product infringes the Haddock Patent. These opinions
relied on persons of ordinary skill in the art
(“POSITA”), a term of art referring to a person
with the relevant level of technical expertise in the
pertinent field necessary to offer their qualified opinion as
an expert in patent cases.
Haddock has forty-six years of experience in the metal
roofing industry, including twenty-five years of experience
as an inventor. Haddock Decl. ¶ 2, ECF No. 58.
defines a POSITA as:
A person who has a minimum of ten years' experience
working with metal standing seam roofs and other metal roofs
types, having installed those systems and understanding how
they function understanding some basic engineering principles
that are involved, such as beam strength and flexural
strength and tipping moments and the calculation of vector
forces induced by snow on that roof surface, and a minimum of
. . . three years or five years in designing systems like
that, snow retention systems.
Dep. at 302:1-10, Pl.'s Statement of Material Facts
(“Pls.' SMF”), Ex. B, ECF No. 141-5.