Stone Strong, LLC v. Delzotto Products of Florida, Inc. et al

Filing 99

MEMORANDUM AND OPINION the Plaintiff is entitled to injunctive relief. The Plaintiff may have ten (10) days within which to file and submit a proposed, final injunctive decree. The Defendant may have ten (10) days thereafter within which to respon d by making objections or suggestions concerning the form of the decree without prejudice of any kind to its right of appeal or otherwise challenge the granting of injunctive relief in any form. Signed by Senior Judge Wm. Terrell Hodges on 10/25/2010. (LRH)

Stone Strong, LLC v. Delzotto Products of Florida, Inc. et al

Doc. 99

UNITED STATES DISTRICT COURT M ID D L E DISTRICT OF FLORIDA O C A L A DIVISION S T O N E STRONG, LLC, P l a i n t if f , -v s D E L ZOTTO PRODUCTS OF FLORIDA, IN C ., DOES 1 THROUGH 10, inclusive, D e fe n d a n ts . / C a s e No. 5 :0 8 -c v - 5 0 3 - O c - 1 0 D A B

M E M O R AN D U M OPINION T h is is an action for patent infringement with defenses of invalidity. Jurisdiction is predicated upon 35 U.S.C. § 271 et seq., and 28 U.S.C. §§ 1331 and 1338(a). Venue lies in this district. T h is case was tried before the court without a jury. It was submitted for d e c is io n after oral arguments by counsel presented upon the close of all the evidence. U p o n due consideration, the court has decided in favor of the Plaintiff, Stone S tro n g , LLC, and against the Defendant, Del Zotto Products of Florida, Inc. The P la in tiff has waived its claim for monetary damages (see Doc. 85, Joint Pretrial S ta te m e n t, p. 13), and now seeks only injunctive relief. Such relief will be granted. D is c u s s io n T h e re are two patents in suit owned by Stone Strong. The first is U. S. Patent N o . 6,796,098 issued September 28, 2004. The second is U. S. Patent No. 7,073,304 is s u e d July 11, 2006. The 098 Patent covers a system and method for making a large

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precast concrete block designed for use in constructing retaining walls. The 304 P a te n t covers a system and method for making a corner block for use in conjunction w ith the blocks covered by the 098 Patent. In general terms, the Stone Strong concrete blocks made as taught in the p rin c ip a l patent in suit (the 098 Patent) have two distinctive features. One feature (not m e n tio n e d in the claims of the patent) is the large size of the block. It has a face of 2 4 square feet, measuring 8 feet long, 3 feet high and 3 feet wide. The second, and m o s t important feature of the blocks, is a lift loop of steel protruding from the top of th e block which fits into a recess in the bottom of the block above thereby fulfilling a d u a l function: first, it enables the lifting and placement of the block in the wall by a c ra n e or similar machine; and, second, it enables the alignment of the blocks one u p o n another as the building of the wall proceeds. T h e 098 Patent contains four independent claims - - Claims 1, 7, 13 and 14 - d ire c te d to the block itself, and independent claim 22 which recites a method for building a wall. See Markman v. W e s tv ie w Instruments, Inc., 517 U.S. 370 (1996) (c o n s tru c tio n of the terms of patent claims is exclusively within the province of the C o u rt). In d e p e n d e n t claim 1 describes a block with a front surface, first and second s id e surfaces, a top surface, a bottom surface and a back surface, where: . . . the top surface includes at least one alignment device, e a c h alignment device comprising a device for lifting the b lo c k when the block is being placed; [and] . . . the bottom s u rfa c e including at least one recess positioned to receive a t least one alignment device of a previously-placed block

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to align the block with respect to the previously-placed b lo c k .1 In d e p e n d e n t claims 7 and 13 further specify a block where "the top surface includes a t least one lift and alignment device for lifting the block when the block is being p la c e d " and where "the bottom surface includ[es] at least one recess positioned to re c e ive at least one lift and alignment device of a previously placed block.2 A s explained in the specification: T h e block includes one or more lift and alignment devices in the block that allow the block to be lifted using a suitable liftin g apparatus, such as a crane, forklift, backhoe, etc. The block includes one or more recessed portions in the b o tto m surface of the block positioned to receive the p ro tru d in g lift and alignment device of a previously-laid b lo c k underneath, thereby helping to align the block with the p re vio u s ly-la id block.3 In d e p e n d e n t claim 22 recites a method for building a block wall in which a first le ve l of blocks is laid with lift and alignment devices, and a subsequent level of blocks is laid so that the recesses align with the lift and alignment devices of the first level of b lo c k s .4 T h e 304 Patent contains similar claims relating to a corner block. There are s e ve n independent claims: claims 1, 9, 10, 11, 21, 22 and 23. Independent claim 1 d e s c rib e s a corner block comprising a back surface, first and second side surfaces,

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098 Patent at column 13, claim 1. 098 Patent at column 14, claims 7 & 13. 098 Patent at column 1, lines 51-59. 098 Patent at columns 15-16, claim 22.

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top surface and bottom surface where, in relevant part, "a top surface includes at least o n e alignment device comprising a device for lifting the block when the block is being p la c e d " and "a bottom surface including at least one recess positioned to receive at le a s t one alignment device of a previously-placed block to align the block with respect to the previously placed block."5 Independent claim 9 is identical to claim 1 except th a t it includes an additional limitation related to the angle between the first and s e c o n d sides of the block.6 Independent claim 10 is identical to claim 1 except that it includes an additional limitation related to the angles of the top and bottom s u rfa c e s .7 Independent claims 11, 21, 22 and 23 describe a wall system and a m e th o d for building a block wall involving corner blocks and regular blocks using the s a m e type of aligning mechanism described in claim 1.8 D e l Zotto is in the business of building forms and manufacturing precast c o n c re te products. It began developing its Gold Rock blocks and the form for creating G o ld Rock blocks in 2006 in response to the demands of a construction project in the B a h a m a s . Although Del Zotto contends that it randomly chose the dimensions for the G o ld Rock blocks, they share the same dimensions with the Stone Strong blocks - m e a s u rin g 8 feet long, 3 feet high and 3 feet wide. (See Plaintiff's Ex. 33). There is

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304 Patent at column 17, claim 1. 304 Patent at column 18, claim 9. 304 Patent at column 18, claim 10. 304 Patent at column 18, claim 11.

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no evidence of any entity other than Stone Strong and Del Zotto having offered or u tiliz e d concrete blocks for retaining walls that have these dimensions. T h e Del Zotto Gold Rock blocks also have a protruding lifting device on the top s u rfa c e and a recess on the bottom surface. Prior to the design of the Gold Rock b lo c k , Del Zotto had never designed a block or a form for making blocks that had a s im ila r recess or notch on the bottom surface. According to Del Zotto, customers u s in g its form may manually set whatever type of lifting device they choose while the c o n c re te is curing. However, with regard to the blocks Del Zotto has manufactured, it has used a semicircular steel pick up or lifting loop, and those same lifting devices a re shown in Del Zotto's marketing brochure (Plaintiff's Ex. 19; see also Plaintiff's Exs. 2 8 and 33). The Gold Rock Blocks also have recesses or notches on the bottom of th e blocks extending through the entire length of the block permitting an upper block to be passed over the surface of a lower block without interference by the lifting loops o n the top surface of the lower block. This permits vertical stacking of the blocks, for s to ra g e or during construction, without damage to the lifting loops. T h e notch or recess on the bottom of Del Zotto's Gold Rock blocks, as shown b y Del Zotto's drawings (see Plaintiff's Ex. 33), is one foot wide at the bottom, is five in c h e s high, and has angled sides sloping inward so as to produce a width of nine and a half inches at the top. The lifting loop typically measures four inches in diameter. It is possible, therefore, despite Del Zotto's argument to the contrary, that in the p ro c e s s of building a wall with Gold Rock blocks, the blocks can be positioned in such

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a way, one over the other, that the notch or recess can be used to aid in aligning the b lo c k s in their relationship to each other in what is known as a "running bond." A lth o u g h Del Zotto created a marketing brochure for its Gold Rock blocks in 2 0 0 7 or 2008, and built precast forms for the manufacture of the blocks, it has not m a d e any sale of the forms or the blocks to anyone else pending the outcome of this litig a tio n . It has made and used some of the blocks, however, in constructing a s to ra g e bin on its own premises in Ocala. T h e core determinative issue is the case is whether the lift loop on the top of D e l Zotto's Gold Rock block (and the notch or recess on the bottom of the Gold Rock b lo c k ) serves an alignment function in addition to the lift function. It is does, there is in frin g e m e n t of the claims of Stone Strong's patents in suit; if it does not - - if the loops p ro vid e only a means of lifting the block - - there is no infringement. This is so even th o u g h Del Zotto never actually sold any of its Gold Rock blocks. See 35 U.S.C. § 2 7 1 ( a ) (defining patent infringement to include using, making, offering to sell, or s e llin g any patented invention). T h e key factor in resolving this determinative issue is the size of the recess or n o tc h on the bottom of the blocks in relation to the size of the lift loop on the top of the b lo c k s. Obviously, as the tolerance between the two features increases, the efficiency of the alignment function rapidly decreases to a point that it becomes nonexistent.9
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The Plaintiff's own expert witness, Daniel Thiele, testified about this as follows: Q. Even if you wanted to have an exposed lift bar, could you create a notch or a, a void such that it would be wide enough to include the lift bar and, but too wide to serve an alignment function?

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Clearly, however, a notch or recess that is one foot wide at the bottom, decreasing to 9 ½ inches at the top, with a height of 5 inches receiving a steel loop 4 inches in d ia m e te r, provides a capability of being used as an aid in alignment, and the claims o f the patents in suit (as previously quoted) were literally infringed when Del Zotto o ffe re d to sell its Gold Rock forms and blocks.1 0 See Bell Communications Research, In c . v. Vitalink Communications Corp., 55 F.3d 615, 622-23 (Fed. Cir. 1995) ("[A]n a c c u s e d product that sometimes, but not always, embodies a claimed method n o n e th e le s s infringes."); Paper Converting Mach. Co. v. Magna-Graphics Corp., 745 F .2 d 11, 20 (Fed. Cir 1984) ("[I]mperfect practice of an invention does not avoid in frin g e m e n t."); Roche Prods., Inc. v. Bolar Pharmaceutical Co., 733 F.2d 858, 861

A Q.

Yes, it would be possible. And how would that work?

A. As we discussed before the break, I, working through it, if we extended that recess from the face shell to the rear shell, it would be too wide to form that alignment function. Q. In that case then you could store the blocks right on top of the other? A. Yes, you could.

Q. In your opinion, that kid of block would not infringe the patent, is that correct? A.
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That's correct.

For these same reasons, the Court further finds that Del Zotto infringed upon St one Strong' s patents under the doctrine of equivalents because all of the limitations of Stone Strong' s patents are found in Del Zotto' s Gold Rock blocks. See Aquatex Indust ries, Inc. v. Techniche Solutions, 478 F.3d 1320, 1326 (Fed. Cir. 2007). The Court also concludes that by offering the Gold Rock blocks for sale ­ including for sale out side of the United States ­ Del Zotto indirectly infringed on Stone Strong' s patents. See 35 U.S.C. § 271(f)(1); Microsoft Corp. v. AT&T Corp., 550 U.S. 437 (2007). 7

(Fed. Cir. 1984) ("Section 271(a) prohibits, on its face, any and all uses of a patented in v e n t io n . " ) . W ith respect to the defenses of anticipation and obviousness, suffice it to say th a t those defenses have not been established by the Defendant through clear and c o n vin c in g evidence, and the patents in suit are valid and enforceable. See Ball A e ro s o l and Speciality Container, Inc. v. Limited Brands, Inc., 555 F.3d 984 (Fed. Cir. 2 0 0 9 ) ("A claimed invention is invalid for obviousness `if the differences between the s u b je c t matter sought to be patented and the prior art are such that the subject matter a s a whole would have been obvious at the time the invention was made to a person h a vin g ordinary skill in the art to which said subject matter pertains.'") (quoting 35 U .S .C . § 103); Abbott Laboratories v. Sandoz, Inc., 544 F.3d 1341 (Fed. Cir. 2008) ("A n tic ip a tio n in patent usage means that the claimed invention was previously known a n d described in a printed publication, explicitly or inherently. . . . and requires that e ve ry claim element and limitation is set forth in a single prior art reference, in the s a m e form and order as in the claim."). It follows that the Plaintiff is entitled to injunctive relief. See W .L . Gore & A s s o c ia te s , Inc. v. Garlock, Inc., 842 F.2d 1275, 1281-82 (Fed. Cir. 1988) (the fact th a t a defendant has voluntarily stopped infringing is generally not a reason for d e n yin g an injunction against future infringement unless the evidence is very p e rs u a s iv e that further infringement will not take place). T h e Plaintiff may have ten (10) days within which to file and submit a proposed, fin a l injunctive decree. The Defendant may have ten (10) days thereafter within which

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to respond by making objections or suggestions concerning the form of the decree w ith o u t prejudice of any kind to its right of appeal or otherwise challenge the granting o f injunctive relief in any form. As required by Rule 65(d), Federal Rules of Civil P ro c e d u re , the proposed injunction must "state its terms specifically and describe in re a s o n a b le detail ­ and not by referring to the complaint or other document ­ the act o r acts restrained. . . ." T h is is an interlocutory order. Final Judgment will be entered in the form of the in ju n c tive decree yet to be finalized. IT IS SO ORDERED. D O N E and ORDERED at Ocala, Florida, this 25th day of October, 2010.

C o p ie s to:

C o u n s e l of Record M a u rya McSheehy

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