RMH Tech LLC v. PMC Industries, Inc.

          RULING ON MOTION FOR SUMMARY JUDGMENT

          VICTOR A. BOLDEN UNITED STATES DISTRICT JUDGE.

         RMH 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.

         Defendant has moved for summary judgment.

         For reasons that follow, the motion is DENIED.

         I. 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.

         A. Factual Allegations

         Generally, 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.

         1. The Stearns Patent

         The 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.

         The 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.

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         2. The Haddock Patent

         On 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.

         The 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.

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Id.

         Claim 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, respectively;

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.

         Plaintiffs claim that the COLOR Snap system infringes the Haddock Patent.

         3. The COLOR Snap Product

         In 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.

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         4. The Kovacs Patent

         In 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”). Id.

         The 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.

Id.

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         5. Persons of Ordinary Skill in the Art

         Each 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.

         a. Robert Haddock

         Mr. 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.

         He 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.

         Haddock Dep. at 302:1-10, Pl.'s Statement of Material Facts (“Pls.' SMF”), Ex. B, ECF No. 141-5.

         b. ...