Untitled case

This patent infringement litigation, Sandvik Mining and Construction USA LLC et al v. CMS Cepcor Limited et al (1:24-cv-00481), is currently ongoing in the District of Delaware. The plaintiffs are Sandvik Mining and Construction USA LLC, a provider of equipment and services for the mining and construction industries, including crushers and aftermarket parts, and its intellectual property arm, Sandvik Intellectual Property AB, a Swedish multinational engineering company's subsidiary that manages its patents and trademarks. The defendants are CMS Cepcor Limited, a UK-based global aftermarket manufacturer and supplier of spare and wear parts for rock crushing equipment, and its US subsidiary, CMS Cepcor Americas LLC. The accused products are "mainshaft or sleeve products" related to rock crushing equipment, which are parts that directly compete with Sandvik's offerings.

The patents asserted in this case are U.S. Patent No. 11,014,090 and U.S. Patent No. 9,827,568. The technical focus of U.S. Patent No. 11,014,090 generally relates to crushing equipment components, specifically concerning a crushing machine having a crushing shell and a mantle. The '090 patent describes a mantle for a gyratory crusher including a mantle body having an external surface and an end, wherein a recess is indented at the external surface and extends around the mantle body to form a closed curve. U.S. Patent No. 9,827,568 is titled "Crushing machine and mantle and mainshaft assembly for a crushing machine" and broadly describes a crushing machine featuring a mantle and a mainshaft assembly designed to improve crushing efficiency and component lifespan.

The procedural posture of the case, assigned to Judge Jennifer L. Hall, is a stay pending the resolution of Inter Partes Reviews (IPRs) at the Patent Trial and Appeal Board (PTAB) for the asserted patents. This stay is notable because the parties have stipulated that the PTAB's decision on the IPRs will be determinative of the validity of all claims before the court, and defendants have agreed not to assert other defenses if the PTAB rules against them on validity. The District of Delaware is a prominent venue for patent litigation, often chosen due to the defendant's state of incorporation or having a regular and established place of business there, and it is known for its experienced patent bench and efficient handling of complex patent disputes. This case is notable as it involves direct competitors in the specialized mining and quarrying equipment aftermarket, and the outcome of the IPRs will significantly shape the continuation and potential resolution of the district court litigation.

Here's a summary of the key legal developments and outcomes for the patent infringement litigation, 1:24-cv-00481, in the Delaware District Court, involving US patent 11014090:

Case Caption: Sandvik Mining and Construction USA LLC et al v. CMS Cepcor Limited et al
Case Number: 1:24-cv-00481
Court: Delaware District Court
Patents at issue: 11014090

Chronological Legal Developments:

• 2024-04-15: Case Filed. Sandvik Mining and Construction USA LLC and Sandvik Intellectual Property AB ("Plaintiffs") filed a patent infringement complaint against CMS Cepcor Limited et al. ("Defendants") in the Delaware District Court.
• 2024-10-07: Stipulation to Stay Pending IPR. The parties filed a joint stipulation to stay the litigation pending the resolution of Inter Partes Review (IPR) proceedings. They agreed that the decision of the Patent Trial and Appeal Board (PTAB) would be determinative of the validity of all asserted claims before the court. Furthermore, if the PTAB did not cancel all claims, the Defendants would not assert other defenses (e.g., non-infringement, Section 112 invalidity defenses) in the district court action. The stipulation specifically referenced IPR2024-01380. The parties agreed to file a joint status report within seven calendar days of the PTAB's resolution of the last IPR.
• 2024-10-10: Case Stayed. The Delaware District Court, through Judge Jennifer L. Hall, granted the parties' stipulation and ordered the case stayed pending Inter Partes Review.

Parallel PTAB IPR Proceedings:

The district court litigation is currently stayed pending resolution of at least one Inter Partes Review (IPR) proceeding, IPR2024-01380, at the Patent Trial and Appeal Board (PTAB) of the USPTO. As of the current date, the details of the institution decision or final written decision for IPR2024-01380, related to patent 11014090, are not immediately available from the provided search results beyond its initial filing and its effect on the district court case. Further investigation of the USPTO PTAB database would be required to determine the status and outcome of this IPR.

Present Posture:

The case is currently stayed pending the outcome of the IPR proceedings at the PTAB. No further substantive litigation has occurred in the district court since the stay was ordered. The parties are obligated to file a joint status report within seven days of the PTAB's final resolution of the IPR.
The case has not yet reached claim construction, discovery, trial, or judgment in the district court.

Here is the identified counsel of record representing the plaintiff(s) in Sandvik Mining and Construction USA LLC et al v. CMS Cepcor Limited et al, case number 1:24-cv-00481, in the Delaware District Court:

Counsel for Plaintiffs Sandvik Mining and Construction USA LLC and Sandvik Intellectual Property AB

Local Counsel (Shaw Keller LLP - Wilmington, DE)

• Karen E. Keller
  • Role: Local Counsel (Managing Partner at firm)
  • Firm: Shaw Keller LLP, Wilmington, DE.
  • Experience Note: Ms. Keller is a managing partner and co-founder of Shaw Keller LLP, focusing on intellectual property and commercial litigation. She has led teams in patent infringement lawsuits across various technologies, including agricultural chemicals, pharmaceuticals, biotechnology, and networking technologies, and is well-regarded for her expertise in Delaware court procedures.
• Emily S. DiBenedetto
  • Role: Local Counsel (Associate at firm)
  • Firm: Shaw Keller LLP, Wilmington, DE.
  • Experience Note: Ms. DiBenedetto focuses her practice on patent infringement, licensing, and trade secret disputes in the District of Delaware. She has a background as a chemical engineer and is a co-inventor on several patents.

Lead Counsel (Pro Hac Vice)

• Schnell M. Austin
  • Role: Lead Counsel (admitted pro hac vice)
  • Firm: Firm information for Schnell M. Austin was not readily available through the provided search results from the docket entry. Further research would be needed to identify the specific firm and its office location.
  • Experience Note: Admitted pro hac vice in this case on April 22, 2024, indicating a role as lead counsel.
• Aaron G. Fountain
  • Role: Lead Counsel (admitted pro hac vice)
  • Firm: Firm information for Aaron G. Fountain was not readily available through the provided search results from the docket entry. Further research would be needed to identify the specific firm and its office location.
  • Experience Note: Admitted pro hac vice in this case on April 22, 2024, indicating a role as lead counsel.

Note on Firm for Pro Hac Vice Attorneys:
The initial search identified Schnell M. Austin and Aaron G. Fountain as having been granted pro hac vice appearances. However, the specific law firms for these attorneys were not explicitly stated in the immediately available search results. Typically, pro hac vice motions would list their associated firm. To fully comply with the request, additional targeted search would be needed to identify their firms and office locations. Without such a targeted search, I cannot reliably provide the firm and office location for these two attorneys.

Counsel of Record for Defendant(s)

The defendants, CMS Cepcor Limited and CMS Cepcor Americas LLC, are represented by the following counsel:

Lead Counsel

• Matthew W. Johnson
  • Role: Lead Counsel
  • Firm: Jones Day (Pittsburgh office)
  • Relevant Experience: Matthew Johnson is a key contact for practice before the USPTO's Patent Trial and Appeal Board (PTAB), co-chairing Jones Day's PTAB subpractice. He has been involved in inter partes review (IPR) and Covered Business Method (CBM) review proceedings since their inception in 2012, representing both petitioners and patent owners. He also advocates for clients in appeals from Board proceedings at the Federal Circuit and administers Jones Day's PTAB Litigation Blog. Johnson has drafted and prosecuted hundreds of patent applications, particularly in software and hardware innovations, and has an electrical engineering background. His notable experience includes successfully representing Google in invalidating three patents asserted against Google Assistant and defending REGENXBIO against a post-grant review petition.

Local Counsel

• Christopher L. Damoy

  • Role: Local Counsel
  • Firm: Saul Ewing LLP (Wilmington, DE office)
  • Relevant Experience: Christopher Damoy is a Delaware-based attorney whose practice includes intellectual property litigation. He is routinely involved in various federal and state court matters.

• Amy K. S. Guss

  • Role: Local Counsel
  • Firm: Duane Morris LLP (New York, NY office)
  • Relevant Experience: While Amy Guss is a partner at Duane Morris, her online profiles primarily highlight her experience in taxation and trusts and estates, including domestic and international estate planning. Her specific patent litigation experience in federal district court or PTAB proceedings is not readily apparent from public information.