Black Cat Inc. v. 4C’s Spray Equipment Rental: Roofing Adhesive Sprayer Patents Dismissed Without Prejudice
Black Cat Inc. asserted two patents covering manifold air-purge spray gun technology for 2-part A+B roofing adhesives against 4C’s Spray Equipment Rental’s VEE AIR ONE SP product line. After 240 days of litigation in the Eastern District of Pennsylvania, the case was dismissed without prejudice — with ongoing settlement discussions targeting a final dismissal with prejudice under the supervision of Judge Hey.
Filing to Dismissed without Prejudice in 240 days
240 days — resolved before trial, consistent with early-stage patent disputes in E.D. Pa.
Dismissed without prejudice: what the court’s order means for both parties
Voluntary dismissal without prejudice under court-approved stipulation
The court approved a stipulation of voluntary dismissal without prejudice under Rule 1, closing the docket while explicitly preserving the ability to refile. A key driver was the patent holder defendant’s concession during the June 11 hearing that USPTO proceedings posed a material risk of invalidating the asserted patents — dramatically altering the litigation calculus at this stage of the case.
Rule 1 stipulation approvedWithout prejudice now — but with prejudice dismissal actively targeted
A dismissal without prejudice technically preserves the plaintiff’s right to refile. However, the court’s order and accompanying tolling agreement signal that both parties, guided by Judge Hey, are working toward a dismissal with prejudice before any further USPTO direction or court intervention. The public record does not confirm whether a with-prejudice dismissal has been finalised.
Refiling right preserved — for nowUSPTO invalidity risk forced a strategic retreat
The court’s order reveals that the patent holder (Black Cat Inc.) conceded during the June 11 hearing that USPTO proceedings could invalidate both asserted patents. This admission materially weakened the enforcement posture and likely accelerated settlement discussions. Until the USPTO proceedings conclude, the commercial value and enforceability of US11559820B1 and US11992858B1 remain uncertain.
Patents under USPTO scrutiny4C’s avoids injunction risk — but case is not definitively closed
4C’s Spray Equipment Rental avoids any immediate injunction or damages award against its VEE AIR ONE SP product line. The without-prejudice dismissal and ongoing mediation under Judge Hey suggest the commercial dispute is not fully resolved. A tolling agreement indicates the parties have agreed to pause limitation periods, consistent with active settlement negotiations.
No injunction; tolling activeFull party and counsel information
| Role | Name | Type | Detail |
|---|---|---|---|
| Plaintiff | BLACK CAT INC. | Company | Search in Eureka ↗ |
| Defendant | 4C’S SPRAY EQUIPMENT RENTAL, LLC | Company | Search in Eureka ↗ |
| Plaintiff counsel | Ava Elizabeth Lutz | Attorney | Counsel for BLACK CAT INC.Search in Eureka ↗ |
| Plaintiff counsel | John D. Simmons | Attorney | Counsel for BLACK CAT INC.Search in Eureka ↗ |
| Plaintiff counsel | STEPHEN E. MURRAY | Attorney | Counsel for BLACK CAT INC.Search in Eureka ↗ |
| Plaintiff law firm | PANITCH SCHWARZE BELISARIO & NADEL | Law Firm | Representing BLACK CAT INC.Search in Eureka ↗ |
| Plaintiff law firm | Panitch Schwarze Belisario & Nadel, LLP | Law Firm | Representing BLACK CAT INC.Search in Eureka ↗ |
| Plaintiff law firm | Panitch Schwarze Belisario & Nadel LLP | Law Firm | Representing BLACK CAT INC.Search in Eureka ↗ |
| Defendant counsel | JOSHUA L. SCHWARTZ | Attorney | Counsel for 4C’S SPRAY EQUIPMENT RENTAL, LLCSearch in Eureka ↗ |
| Defendant counsel | JUSTIN TOMEVI | Attorney | Counsel for 4C’S SPRAY EQUIPMENT RENTAL, LLCSearch in Eureka ↗ |
| Defendant counsel | Joseph R Falcon , III | Attorney | Counsel for 4C’S SPRAY EQUIPMENT RENTAL, LLCSearch in Eureka ↗ |
| Defendant law firm | Barley Snyder LLP | Law Firm | Representing 4C’S SPRAY EQUIPMENT RENTAL, LLCSearch in Eureka ↗ |
| Presiding judge | Judge N/A | Judge | Pennsylvania Eastern District CourtSearch in Eureka ↗ |
Official order — verbatim text
The court’s June 13, 2025 order approves a voluntary stipulation of dismissal without prejudice, but is notable for its explicit reference to the patent holder’s on-the-record concession of USPTO invalidity risk during the June 11 hearing. This framing is unusual — courts rarely cite a party’s own candid risk assessment in a dismissal order. The order’s direction that Judge Hey will continue mediating toward a with-prejudice dismissal confirms the dispute is commercially live despite formal case closure. The tolling agreement preserves claims and defences pending that resolution.
US11559820B1 & US11992858B1 — Manifold Air-Purge Spray Gun for 2-Part A+B Roofing Adhesives
US11559820B1 (application no. US16/918340) and US11992858B1 (application no. US18/099753) cover manifold air-purge spray gun technology designed for the controlled dispensing of 2-part A+B roofing adhesives. These patents address a core challenge in commercial roofing: preventing clogging and ensuring consistent mixing ratios when applying fast-curing two-component adhesive systems under field conditions. The technology encompasses gun-and-tip assemblies, manifold purge mechanisms, and mobile sprayer configurations including heated hose and drum-feed variants.
In the commercial roofing and waterproofing market, 2-part adhesive spray systems represent a growing segment as low-VOC and solvent-free adhesive chemistries displace traditional alternatives. Patents covering the dispensing hardware — guns, manifolds, tips, and purge mechanisms — sit at a critical interface between adhesive chemistry suppliers and roofing contractors. Black Cat Inc.’s assertion of these patents against a rental equipment business suggests a strategy of controlling the application hardware layer across the supply chain. The USPTO validity risk conceded during litigation suggests the claims may face prior art or enablement challenges that could affect the entire enforcement position.
Should you run an FTO against US11559820B1 and US11992858B1?
Any manufacturer, distributor, or rental operator of 2-part A+B roofing adhesive spray equipment — including manifold spray guns, air-purge tip assemblies, heated hose kits, or mobile drum-feed sprayers — should assess FTO exposure against these two patents. The breadth of accused products in this case (spanning guns, tips, manifolds, kits, and complete sprayer systems) suggests claims that read broadly across hardware configurations used in commercial roofing applications. The patent holder’s own concession of USPTO invalidity risk does not eliminate enforcement risk during the pendency of those proceedings.
PatSnap Eureka’s FTO Search Agent can map the claim scope of US11559820B1 and US11992858B1 against your specific product configurations, identify prior art cited in USPTO proceedings, and flag related continuation or divisional applications that may present independent infringement risk. For R&D teams developing next-generation roofing adhesive applicators, Eureka’s landscape analysis can also identify design-around opportunities and monitor the USPTO invalidity proceedings in real time.
Run a freedom-to-operate analysis on US11559820B1 to assess your product’s exposure
Run FTO in Eureka →Similar patent cases: manifold spray gun and roofing adhesive applicator disputes
Cases involving spray gun hardware patents for 2-part adhesive application, filed in the Eastern District of Pennsylvania and comparable federal venues.
What this case signals for the roofing adhesive spray equipment IP landscape
This case illustrates how USPTO validity proceedings can rapidly reshape district court patent enforcement strategy in niche industrial equipment markets.
USPTO proceedings can collapse district court leverage mid-case
Black Cat’s mid-litigation concession of USPTO invalidity risk — made on the record during a hearing — demonstrates how inter partes or ex parte proceedings can fundamentally shift patent enforcement dynamics before trial. Competitors and licensees should monitor USPTO dockets for the asserted patents as closely as the district court docket.
Tolling agreements signal live commercial negotiations despite case closure
The approved stipulation includes a tolling agreement, which typically signals that the parties anticipate ongoing negotiations beyond the court’s docket. For competitors in the roofing adhesive applicator space, this suggests the underlying IP dispute — and any licensing framework — remains unresolved and commercially live.
BLACK v 4C’S — key questions answered
The case was dismissed without prejudice on June 13, 2025, pursuant to a court-approved stipulation. The court noted the patent holder’s concession of USPTO invalidity risk and directed that mediation under Judge Hey would continue toward a dismissal with prejudice. No damages or injunction were awarded.
Black Cat Inc. asserted US11559820B1 (application US16/918340) and US11992858B1 (application US18/099753). Both patents cover manifold air-purge spray gun technology for dispensing 2-part A+B roofing adhesives, including gun-and-tip assemblies, purge mechanisms, and mobile sprayer configurations.
The accused products include 4C’s VEE AIR ONE SP spray gun and tip, PJR-VEE AIR ONE SP, A+B Roofing Adhesive Sprayer, VA1SP Spray Tip, air upgrade kits, manifold air-purge spray guns, the P55 mobile 2-part adhesive sprayer, heated hose, and the Vee-Ultimate dispensing gun, among others — spanning guns, tips, manifolds, kits, and complete sprayer systems.
A dismissal without prejudice technically preserves Black Cat’s right to refile the infringement claims. However, the court’s order and an accompanying tolling agreement indicate the parties are actively working toward a final dismissal with prejudice under Judge Hey’s mediation. If that prejudice dismissal is filed, Black Cat would be barred from refiling the same claims.
During the June 11, 2025 hearing, the patent holder (Black Cat Inc.) conceded on the record that USPTO proceedings posed a material risk of invalidating both asserted patents — US11559820B1 and US11992858B1. The court cited this concession as a factor in approving the without-prejudice dismissal, noting it ‘dramatically changed the nature of this case.’ The specific USPTO proceedings are not detailed in the public docket excerpts available.
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