Case 1:20-cv-01121-MN Document 1 Filed 08/26/20 Page 1 of 13 PageID #: 1
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`GIBRALTAR PERIMETER SECURITY, LP,
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`Plaintiff,
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`v.
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`RSA PROTECTIVE TECHNOLOGIES, LLC,
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`Defendant.
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`C.A. No. ____________
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`JURY TRIAL DEMANDED
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`COMPLAINT FOR DECLARATORY JUDGMENT
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`Plaintiff Gibraltar Perimeter Security, LP (“Plaintiff” or “GPS”), brings this action
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`against Defendant RSA Protective Technologies, LLC (“Defendant” or “RSA”), and hereby
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`alleges, as follows:
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`NATURE OF THE ACTION
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`1.
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`GPS seeks a declaratory judgment by this Court that GPS’s products, specifically
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`its shallow mount bollards, do not infringe any claim of U.S. Patent No. 8,215,865 (the “‘865
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`Patent”).
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`2.
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`GPS seeks this relief because RSA has sued an ultimate customer of GPS, Clark
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`County, Nevada, having filed a patent infringement complaint (“RSA Complaint”) in the United
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`States District Court for the District of Nevada. In the RSA Complaint, RSA alleges that “Clark
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`County owns, rents, or controls land on which shallow mount security bollards have been
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`installed, and currently uses such shallow mount bollards . . . designed and/or manufactured by”
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`GPS (RSA Complaint ¶ 7), and alleges that GPS’s “shallow bollards practice and infringe the
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`‘865 patent” (id. ¶ 18). RSA’s lawsuit has placed a cloud over GPS and the shallow mount
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`bollards manufactured, designed and/or sold by GPS, has injured and is injuring GPS’s business
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`and business relationships, and has caused GPS’s customers to seek indemnification and defense
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`thereby creating a concrete, actual, substantial, and immediate justiciable controversy between
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`GPS and RSA. Accordingly, GPS brings this case to clear its name and that of its shallow mount
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`bollard products, and to protect Clark County and other GPS customers against claims of
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`infringement that lack merit.
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`PARTIES
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`3.
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`Plaintiff GPS is a limited partnership organized and existing under the laws of the
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`State of Texas, having a principal place of business at 4303 Innovation Loop, Marble Falls,
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`Texas 78654.
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`4.
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`On information and belief, Defendant RSA is a limited liability company
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`organized and existing under the laws of the State of Delaware, having a principal place of
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`business at 223 Independence Drive, Claremont, California 91711. Service of process can be
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`effected on its officer or appointed agent at Corporation Trust Center, 1209 Orange Street,
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`Wilmington, Delaware, 19801.
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`JURISDICTION AND VENUE
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`5.
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`This action arises under the patent laws of the United States, 35 U.S.C. § 100, et
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`seq. This Court has subject matter jurisdiction over this action under 28 U.S.C. §§ 1331, 1338,
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`and 2201 based on a definite and concrete, real and substantial, justiciable controversy between
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`Plaintiff and Defendant, for declaratory judgment of patent non-infringement under 28 U.S.C. §§
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`1331, 1338, 2201 and 2202.
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`6.
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`This Court has personal jurisdiction over Defendant RSA by virtue of its
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`organization under the laws of the state of Delaware.
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`7.
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`Venue is proper in this judicial district pursuant to 28 U.S.C. §§ 1391 (b) and (c)
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`and 1400 (b) because RSA is a limited liability company and is a resident of this district.
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`FACTUAL BACKGROUND
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`8.
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`RSA purports to be the owner by assignment of the ‘865 Patent entitled “Anti-
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`RAM System and Method of Installation” which states that it issued on July 10, 2012. The ‘865
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`Patent identifies Richard S. Adler and John Crawford as inventors. A copy of the ‘865 Patent is
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`attached as Exhibit A.
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`9.
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`The ‘865 Patent issued with 35 claims, of which claims 1, 16, and 33 are
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`independent claims and the remaining claims are dependent. Independent claims 1, 16, and 33
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`are reproduced below:
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`1. A bollard structure comprising:
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`at least one bollard; and
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`a base comprising opposed ends and a plurality of structural members which
`intersect and are tied together, for each bollard of the bollard structure at least
`one first structural member extending from a first of the opposed ends of the
`base to a second of the opposed ends of the base in a first direction
`intersecting with the opposed ends, and at least one structural member
`extending to intersect with the at least one first structural member;
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`each bollard being secured to at least one of the at least one first structural
`member and the at least one structural member of the base for the respective
`bollard and extending upwardly from the base so as to transmit forces applied
`to the at least one bollard to the base;
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`wherein the base is configured to be mounted in a shallow excavation with the
`at least one bollard extending above grade; and
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`wherein the at least one first structural member or the at least one structural
`member or both are configured or tied together to retain within the base
`supporting media introduced into the base when the base is mounted in the
`excavation such that the rotation is resisted of a bollard or bollards and the
`base from an impact against the bollard or bollards.
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`16. A bollard structure comprising:
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`a plurality of bollards; and
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`a base comprising opposed ends and a plurality of structural members which
`intersect and are tied together, for each bollard of the bollard structure at least
`one first structural member extending from a first of the opposed ends of the
`base to a second of the opposed ends of the base in a first direction
`intersecting with the opposed ends, and at least one structural member
`extending to intersect with the at least one first structural member;
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`each of the plurality of bollards being secured to at least one of the at least one
`first structural member and the at least one structural member of the base for
`the respective bollard and extending upwardly from the base so as to transmit
`forces applied to the at least one bollard to the base;
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`wherein the base is configured to be mounted in a shallow excavation with the
`plurality of bollards extending above grade of the excavation; and
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`wherein the at least one first structural member or the at least one structural
`member or both are configured or tied together to retain within the base
`supporting media introduced into the base when the base is mounted in the
`excavation such that the rotation is resisted of a bollard or bollards and the
`base from an impact against the bollard or bollards.
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`33. A bollard structure comprising:
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`a plurality of bollards; and
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`a base comprising opposed ends and a plurality of members which intersect
`and are tied together, for each bollard of the bollard structure at least one first
`structural member extending from a first of the opposed ends of the base to a
`second of the opposed ends of the base in a first direction intersecting with the
`opposed ends, and at least one structural member extending to intersect with
`the at least one first structural member;
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`each of the plurality of bollards being secured to at least one of the at least one
`first structural member and the at least one structural member of the base for
`the respective bollard and extending upwardly from the base so as to transmit
`forces applied to the at least one bollard to the base;
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`at least one of the plurality of members that extend parallel to the ends of the
`base extending between a structural member to which a first bollard is secured
`and a structural member to which a second bollard adjacent to the first bollard
`is secured;
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`wherein the base is configured to be mounted in a shallow excavation with the
`plurality of bollards extending above grade of the excavation; and
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`wherein the at least one first structural member or the at least one structural
`member or both are configured or tied together to retain within the base
`supporting media introduced into the base when the base is mounted in the
`excavation such that the rotation is resisted of a bollard or bollards and the
`base from an impact against the bollard or bollards.
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`10.
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`GPS designs, manufactures, and sells to customers shallow mount bollards which
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`protect spaces, buildings, or sensitive locations, and the people in or on them, from accidental
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`and intentional vehicle collisions. GPS’s shallow mount bollards can be installed in a variety of
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`locations, including around buildings, around and on sidewalks, and on roadways to prevent
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`people, including terrorists, from driving vehicles into sensitive buildings or onto sidewalks and
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`roadways where people may be present.
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`11.
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`RSA alleges that it owns “all right title, and interest in the ‘865 Patent, including
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`the right to use and enforce the ‘865 Patent.” (RSA Complaint ¶13.)
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`12.
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`The ‘865 Patent states in the “Field of the Invention” section that it “relates to the
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`assembly and installation of bollard systems for use in protecting building and other structures
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`from being rammed by vehicles.”
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`13.
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`On January 21, 2020, RSA sued GPS’s ultimate customer, Clark County, Nevada,
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`in the United States District Court for the District of Nevada (RSA Protective Technologies, LLC
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`v. Clark County, No. 2:20-cv-00143-RFB-EJY), alleging infringement of the ‘865 Patent.
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`14.
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`RSA’s Complaint alleges that Clark County, Nevada, infringes the ‘865 Patent
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`because “Clark County owns, rents, or controls land on which shallow mount security bollards
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`have been installed, and currently uses such shallow mount bollards, on properties including but
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`not limited to Las Vegas Boulevard. These security bollards have been designed and/or
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`manufactured by, but not limited to, Gibraltar Perimeter Security (“Gibraltar).” (RSA Complaint
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`¶ 7.)
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`15.
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`RSA’s Complaint alleges that GPS’s “shallow bollards practice and infringe the
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`‘865 Patent.” (RSA Complaint ¶ 18.)
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`16.
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`Clark County has sought indemnity and defense from GPS. GPS is obligated to
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`defend and will indemnify Clark County for RSA’s patent infringement claims based on Clark
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`County’s use of GPS’s shallow mount bollards.
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`17.
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`RSA has instituted lawsuits across the country alleging infringement of the ‘865
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`Patent against several manufacturers or suppliers of shallow mount bollards. RSA has alleged
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`that the claims of the ‘865 Patent are infringed by: the Secure USA shallow bollards (RSA
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`Protective Technologies., LLC v. Secure United States, Inc., No. 9:18-CV-81124-RLR (S.D.
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`Fla.)); the Delta Scientific shallow mount bollards, including Models DSC600, DSC650 (RSA
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`Protective Technologies, LLC, et al. v. Delta Scientific Corp., et al., No. 2:19-cv-06024 (C.D.
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`Cal.)); the Ameristar shallow mount bollards, including but not limited to Ameristar’s Ultra
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`Shallow Mount Bollards (RSA Protective Technologies., LLC v. Los Angeles International
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`Airport, No. 2:19-cv-10371 (C.D. Cal.)); the Barrier1 shallow mount bollards, including Models
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`SMB-400, SMB-800, and SMB-1200 (RSA Protective Technologies, LLC v. Mfm Contracting,
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`Corp., No. 1:18-cv-09696 (S.D.N.Y.), and RSA Protective Technologies., LLC v. Los Angeles
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`International Airport, No. 2:19-cv-10371 (C.D. Cal.)); and the Thornton Tomasetti shallow
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`bollards (RSA Protective Technologies, LLC, et al. v. AECOM, et al., No. 1:18-cv-09960
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`(S.D.N.Y.)).
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`18.
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`GPS continues to design, manufacture, offer for sale and sell shallow mount
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`bollards, and therefore, has a reasonable apprehension, and there exists a reasonable potential,
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`that RSA could file an action against GPS and allege that GPS has directly and/or indirectly
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`infringed the ‘865 Patent by making, using, importing, selling, and/or offering for sale shallow
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`mount bollard products, including but not limited to the G-1100 Series, i.e., the G-1150 shallow
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`mount bollard depicted in the RSA Complaint, the G-1400 Series, and the G-1600 Series.
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`19.
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`GPS and its shallow mount bollard products, including but not limited to the G-
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`1100 Series, i.e., the G-1150 shallow mount bollard depicted in the RSA Complaint, the G-1400
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`Series, and the G-1600 Series, do not infringe and have not infringed, either directly or
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`indirectly, any claim of the ‘865 Patent. In view of RSA’s allegations that GPS’s shallow
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`bollards practice and infringe the ‘865 Patent, and its patent infringement claim against at least
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`one of GPS’s customers based upon purchase and use of GPS’s shallow mount bollards, a
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`substantial controversy exists between the parties which is of sufficient immediacy and reality to
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`warrant declaratory relief.
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`COUNT I
`(Declaratory Judgment of Non-Infringement of the ’865 Patent)
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`20.
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`GPS incorporates by reference the allegations contained in the proceeding
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`paragraphs, in their entirety.
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`21.
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`In the RSA Complaint against Clark County, RSA has accused “Gibraltar shallow
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`bollards” of infringing the ‘865 Patent. (RSA Complaint ¶ 18.) RSA alleges that shallow bollards
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`designed and manufactured by Gibraltar infringe claims 1–35 of the ‘865 Patent. (Id. ¶¶ 21–53.)
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`In the RSA Complaint RSA has included a number of images to support its allegation that GPS
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`products as used by Clark County infringe the ‘865 Patent. Some of those images from the RSA
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`Complaint, showing a G-1150 shallow bollard, are reproduced below. (Id. ¶ 17.)
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`22.
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`Figure 3 of the ‘865 Patent, which the patent states is “an embodiment of this
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`invention” is shown on the face of the patent and is reproduced below.
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`23.
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`GPS’s shallow mount bollard products, including but not limited to the G-1100
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`Series, i.e., the G-1150 shallow mount bollard depicted in the RSA Complaint, the G-1400
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`Series, and the G-1600 Series, do not meet each and every limitation of independent claims 1,
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`16, and 33 of the ‘865 Patent, including at least one or more of the following limitations: “a base
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`comprising opposed ends and a plurality of structural members which intersect and are tied
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`together, for each bollard . . . at least one first structural member extending from a first of the
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`opposed ends of the base to a second of the opposed ends of the base in a first direction
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`intersecting with the opposed ends, and at least one structural member extending to intersect with
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`the at least one first structural member”; and “each bollard being secured to at least one of the at
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`least one first structural member and the at least one structural member of the base for the
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`respective bollard”; and “wherein the at least one first structural member or the at least one
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`structural member or both are configured or tied together to retain within the base supporting
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`media introduced in the base when the base is mounted in the excavation such that rotation is
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`resisted of a bollard or bollards and the base from an impact against the bollard or bollards.”
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`24.
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`Because GPS’s shallow mount bollard products, including but not limited to the
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`G-1100 Series, i.e., the G-1150 shallow mount bollard depicted in the RSA Complaint, the G-
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`1400 Series, and the G-1600 Series, do not meet each and every limitation of independent claims
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`1, 16, and 33 of the ‘865 Patent, GPS’s shallow mount bollards do not meet each and every
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`limitation of dependent claims 2-15, 17-32, and 34-35 of the ‘865 Patent.
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`25.
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`GPS’s shallow mount bollard products, including but not limited to the G-1100
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`Series, i.e., the G-1150 shallow mount bollard depicted in the RSA Complaint, the G-1400
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`Series, and the G-1600 Series, do not infringe, directly or indirectly, any claim of the ‘865
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`Patent, either literally or under the doctrine of equivalents.
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`26.
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`Clark County’s use of GPS’s products do not infringe direct or indirectly, any
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`claim of the ‘865 Patent, either literally or under the doctrine of equivalents.
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`27.
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`GPS seeks and is entitled to a declaratory judgment that GPS’s shallow mount
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`bollard products, including but not limited to the G-1100 Series, i.e., the G-1150 shallow mount
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`bollard depicted in the RSA Complaint, the G-1400 Series, and the G-1600 Series, and its
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`customers’ use of GPS shallow mount bollard products, including but not limited to the G-1100
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`Series, i.e., the G-1150 shallow mount bollard depicted in the RSA Complaint, the G-1400
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`Series, and the G-1600 Series, do not infringe under 35 U.S.C. § 271 (or any sub-section thereof)
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`any claim of the ‘865 Patent. Such a determination and declaration are necessary and
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`appropriate at this time to resolve the parties’ dispute regarding alleged infringement of the ‘865
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`Patent.
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`PRAYER FOR RELIEF
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`WHEREFORE, Plaintiff, GPS, respectfully requests that this Court enter the following
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`relief pursuant to 28 U.S.C. §§ 2201 and 2202:
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`A.
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`That a declaration and judgment be issued under 28 U.S.C. § 2201 declaring that
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`GPS’s shallow mount bollard products, including but not limited to the G-1100 Series, i.e., the
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`G-1150 shallow mount bollard depicted in the RSA Complaint, the G-1400 Series, and the G-
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`1600 Series, do not infringe and have not infringed under 35 U.S.C. § 271 (or any sub-section
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`thereof) any claim of the ‘865 Patent.
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`B.
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`That a declaration and judgment be issued under 28 U.S.C. § 2201 declaring that
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`GPS’s customers do not infringe and have not infringed the ‘865 Patent by using GPS’s shallow
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`mount bollard products, including but not limited to the G-1100 Series, i.e., the G-1150 shallow
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`mount bollard depicted in the RSA Complaint, the G-1400 Series, and the G-1600 Series.
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`C.
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`That a preliminary and permanent injunction be entered, enjoining RSA from (1)
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`alleging infringement against GPS and any of GPS’s customers and potential customers based on
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`the use or planned use of GPS’s shallow mount bollard products, including but not limited to the
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`G-1100 Series, i.e., the G-1150 shallow mount bollard depicted in the RSA Complaint, the G-
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`1400 Series, and the G-1600 Series; (2) taking any action to suggest that GPS or its customers or
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`its potential customers require a license form RSA for the ‘865 Patent; or (3) pursuing
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`infringement actions against GPS customers or potential customers based on the use or planned
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`use of GPS’s shallow mount bollard products, including but not limited to the G-1100 Series,
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`i.e., the G-1150 shallow mount bollard depicted in the RSA Complaint, the G-1400 Series, and
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`the G-1600 Series.
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`D.
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`That the Court award GPS its costs and reasonable attorneys’ fees incurred in
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`connection with this action; and
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`E.
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`That the Court grant such other and further relief as it deems just and proper.
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`DEMAND FOR JURY TRIAL
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`Pursuant to Rule 38(b) of the Federal Rules of Civil Procedure, Plaintiff GPS demands a
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`trial by jury as to all issues so triable.
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`POTTER ANDERSON CORROON LLP
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`
`
`By: /s/ Philip A. Rovner
`Philip A. Rovner (# 3215)
`Jonathan A. Choa (#5319)
`Alan R. Silverstein (#5066)
`1313 North Market Street
`P.O. Box 951
`Wilmington, DE 19899-0951
`Tel: (302) 984-6000
`provner@potteranderson.com
`jchoa@potteranderson.com
`asilverstein@potteranderson.com
`
`Attorneys for Plaintiff
`Gibraltar Perimeter Security, LP
`
`OF COUNSEL:
`
`Tom Van Arsdel
`WINSTEAD PC
`600 Travis Street, Suite 5200
`Houston, TX 77002
`(713) 650-2728
`
`Jay S. Bowen
`Rebekah L. Shulman
`SHACKELFORD BOWEN MCKINLEY
`NORTON, LLP
`1 Music Square South, Ste. 300
`Nashville, TN 37203
`(615) 329-4440
`
`Dated: August 26, 2020
`6851262
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