S-5! Prevails over ACE Clamp/PMC Finding of Infringement
For almost three decades S-5! has designed, tested and ethically marketed innovative products and systems for the metal roofing industry that enable engineered attachment of solar modules, snow guards, service walkways and other ancillaries. During that time, S-5! and its related entities have been awarded more than 50 patents.
As the market leader and innovator in this field, S-5! products are often copied by others. However distasteful it may be, this practice is legal when patents have expired. Nevertheless, on occasion, some of our inventions are copied during the active term of our patents. When that occurs, S-5! formally protects its investments in research and innovation. Such a situation occurred when PMC Industries, Inc. (doing business as AceClamp®), introduced to the market the ColorSnap System in 2016. Once advised that the system infringed upon our active US Patent No. 6,470,629, PMC refused to voluntarily remove the system from the market. They also refused reasonable attempts at licensure from S-5! So, S-5! brought suit for infringement in Federal District Court in its home state of Colorado. The action was later transferred to PMC’s home state of Connecticut for trial, which concluded in December 2018.
We were not interested in obtaining money damages from PMC for its infringement, but only an injunction to force it to respect our patent rights. The Honorable Judge Borland of the United States District Court for the District of Connecticut granted that relief, finding that the ColorSnap System does, in fact, directly infringe the asserted S-5! patent and ordered permanent enjoinment of PMC and anyone working with PMC from making, using, offering for sale, selling, advertising for sale, or installing the infringing system(s) during the term of S-5’s legal patent protection. The injunction against PMC further enjoins PMC from making or selling replacement parts to repair or replace previously sold ColorSnap systems for the remaining term of the patent.
S-5! wishes to express empathy that this injunction may impact PMC’s customers, but points out that S-5! and its related entities were seeking such an injunction for several years now. PMC has been fully aware of this, but nevertheless kept on selling the infringing systems. If you have purchased or installed the infringing system from ACE/PMC, they have placed you (and building owner) in jeopardy of patent infringement actions. We suggest that you proceed as you believe morally and legally correct.
If you are interested in the details, they can be learned through review of the publicly filed Court order, which can be accessed through the following link: S-5! vs AceClamp 2018 Court Order
It saddens us that such actions remain necessary to compel competitors to act ethically, responsibly and within the laws afforded by U.S. patent protection. S-5! remains committed to reaching commercially reasonable resolutions to all business disputes when they arise. But, when a competitor does not respect our valid patent rights and acts in ways deemed commercially unreasonable, S-5! and its related entities have no choice but to defend their intellectual property by all appropriate legal means and will always do so. It’s “the right way™”.