Parallax Group Intl LLC v. Incstores LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: The Parallax Group International, LLC (California)
  • Defendant: Incstores LLC (Arizona)
  • Plaintiff’s Counsel: Fish & Tsang, LLP
• Case Identification: 8:16-cv-00929, C.D. Cal., 02/09/2017
• Venue Allegations: The complaint does not contain a specific section on venue, but identifies the Plaintiff as a California corporation with a principal place of business in Aliso Viejo, California, which is located within the Central District of California.
• Core Dispute: Plaintiff alleges that Defendant’s interlocking resilient floor mats infringe a utility patent covering a multi-layer construction and a design patent covering the ornamental appearance of a mat.
• Technical Context: The technology relates to interlocking foam floor tiles, commonly used in gyms, playrooms, and workshops, which are designed to be reversible and durable.
• Key Procedural History: This filing is a Second Amended Complaint. Subsequent to the filing of this complaint, the U.S. Patent and Trademark Office issued ex parte re-examination certificates for both patents-in-suit. The re-examination certificate for the ’085 patent, issued April 1, 2022, cancelled all claims, including the asserted claim 1. The re-examination certificate for the ’764 patent, issued June 27, 2022, cancelled the sole claim. The cancellation of all asserted claims after the filing of the complaint is a dispositive post-filing event for the asserted patent rights.

Case Timeline

Date	Event
2004-04-08	Earliest Priority Date for '085 and '764 Patents
2007-06-05	U.S. Design Patent No. D543,764 ('764 Patent) Issued
2009-07-01	Alleged Infringement Start Date for '764 Patent
2016-03-22	U.S. Patent No. 9,289,085 ('085 Patent) Issued
2016-03-22	Alleged Infringement Start Date for '085 Patent
2016-05-20	Alleged Date of Defendant's Knowledge of Both Patents
2017-02-09	Second Amended Complaint Filed
2022-04-01	'085 Patent Re-examination Certificate Issued (All Claims Cancelled)
2022-06-27	'764 Patent Re-examination Certificate Issued (Claim Cancelled)

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 9,289,085 - Floor Matting

• Patent Identification: U.S. Patent No. 9,289,085, "Floor Matting," issued March 22, 2016.

The Invention Explained

• Problem Addressed: The patent describes issues with prior art floor mats, including the delamination of bonded layers, particularly when subjected to shear forces from use or temperature changes. It also notes the commercial limitations of single-sided mats, which require retailers to stock numerous variations of color and texture. (’085 Patent, col. 2:25-56).
• The Patented Solution: The invention is a reversible, multi-layer floor mat where the layers are joined by an "undulating inner boundary." This non-planar boundary is designed to resist delamination by converting shear forces into compressive and tension forces. This construction allows for a durable mat with different colors on each side, increasing its versatility. (’085 Patent, Abstract; col. 2:51-62).
• Technical Importance: The use of an undulating boundary provides a structural solution to the mechanical problem of layer separation in composite mats, aiming to create a more robust and commercially flexible product. (’085 Patent, col. 2:51-62).

Key Claims at a Glance

• The complaint asserts independent claim 1. (Compl. ¶15).
• The essential elements of independent claim 1 are:
  • A reversible floor matting comprising: a body with an interlocking peripheral wall having a plurality of teeth and a plurality of receiving slots,
  • the body comprising a first layer and a second layer that have the same coefficient of thermal expansion;
  • wherein the first layer has a first color and the second layer has a second color that is different than the first color; and
  • wherein the first layer and second layer are bound together to form an undulating inner boundary therebetween.
• The complaint does not explicitly reserve the right to assert dependent claims.

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U.S. Design Patent No. D543,764 - Resilient Mat

• Patent Identification: U.S. Design Patent No. D543,764, "Resilient Mat," issued June 5, 2007.

The Invention Explained

• Problem Addressed: Design patents do not address technical problems; they protect the novel, non-obvious ornamental appearance of an article of manufacture.
• The Patented Solution: The patent claims the ornamental design for a resilient mat. The design consists of the visual characteristics of the mat as depicted in the patent's figures. The primary features are its overall square shape and the specific pattern of its interlocking, puzzle-piece-style edges. (’764 Patent, Figs. 1-2). The patent's description notes that the top and bottom portions have different colors, though this is not depicted in the line drawings. (’764 Patent, Description).
• Technical Importance: The design provides a specific aesthetic appearance for an interlocking floor mat.

Key Claims at a Glance

• The complaint asserts infringement of the design claimed in the patent, which is the single claim for "The ornamental design for the resilient mat, as shown and described." (Compl. ¶37; ’764 Patent, Claim).

III. The Accused Instrumentality

Product Identification

• The complaint accuses two distinct groups of products.
  • For the ’085 Patent: "Designer Soft Tiles, Jumbo Soft Tiles, MMA Mats, Soft Shapes, and Tatami Tiles" (the "’085 Infringing Products"). (Compl. ¶19).
  • For the ’764 Patent: "the Eco-Soft Carpet Tiles, Premium Soft Wood Tiles, and Soft Wood Tiles" (the "’764 Infringing Products"). (Compl. ¶40).

Functionality and Market Context

• The complaint identifies the accused products as interlocking floor mats offered for sale by Defendant Incstores and third-party distributors such as Sears and Amazon. (Compl. ¶¶19-20, 24). The product names imply they are resilient tiles for flooring, with some having specific surface finishes like "Carpet" or "Wood." (Compl. ¶¶19, 40). The complaint does not provide further technical detail about the construction or specific features of these products.

IV. Analysis of Infringement Allegations

No probative visual evidence provided in complaint.

’085 Patent Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
A reversible floor matting comprising: a body with an interlocking peripheral wall having a plurality of teeth and a plurality of receiving slots...	The accused '085 Infringing Products are alleged to be floor mats. The complaint alleges these products infringe but does not specify facts demonstrating their reversibility or the structure of their interlocking edges. (Compl. ¶¶19-20).	¶19, ¶20	col. 5:2-6
...the body comprising a first layer and a second layer that have the same coefficient of thermal expansion...	The complaint does not provide specific factual allegations that the accused products are constructed of two layers or that such layers possess the same coefficient of thermal expansion. It alleges infringement of the claim as a whole. (Compl. ¶20).	¶20	col. 5:7-10
...wherein the first layer has a first color and the second layer has a second color that is different than the first color...	The complaint does not allege specific facts regarding the colors of the layers in the accused products, but alleges infringement of the claim containing this limitation. (Compl. ¶20).	¶20	col. 5:11-14
...and wherein the first layer and second layer are bound together to form an undulating inner boundary therebetween.	The complaint alleges infringement of claim 1, which requires this feature, but provides no facts describing the internal boundary between layers of the accused products. The complaint states that infringement details are in Exhibit 2, which was not included in the provided court filing. (Compl. ¶¶20-21).	¶20, ¶21	col. 5:15-18

• Identified Points of Contention:
  • Evidentiary Question: A central factual dispute would concern the internal structure of the accused mats. The complaint does not provide evidence that the products contain an "undulating inner boundary," which is a key technical limitation of the asserted claim and not externally visible.
  • Technical Question: Infringement analysis would require determining whether the layers of the accused products have the "same coefficient of thermal expansion." This raises the question of what degree of similarity is required by the claim and what evidence Plaintiff could produce to prove this technical property.

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’764 Patent Infringement Allegations

• The complaint alleges that the accused '764 Infringing Products are "the same, or are substantially identical to, the design claimed in the '764 patent." (Compl. ¶41). It further alleges that under the legally required "ordinary observer" test, an observer familiar with prior art would be deceived into believing the accused products are the same as the patented design. (Compl. ¶42).

• Identified Points of Contention:

  • Scope Question: The '764 patent drawings depict a mat with a plain, unadorned surface. A key question is whether this design can be infringed by products named "Eco-Soft Carpet Tiles" and "Premium Soft Wood Tiles," which imply the presence of distinct surface textures (e.g., carpet or wood grain). The court may need to determine if the addition of such surface ornamentation creates a substantially different overall visual impression, thereby avoiding infringement.

V. Key Claim Terms for Construction

• The Term: "undulating inner boundary" (’085 Patent, Claim 1)

• Context and Importance: This term defines the core structural innovation of the ’085 patent, intended to prevent delamination. Its construction is critical to determining the scope of infringement, as a simple flat boundary between two layers would not infringe.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The claim language itself does not impose a specific amplitude or frequency on the undulation, suggesting any non-planar boundary might suffice.
  • Evidence for a Narrower Interpretation: The specification describes the boundary as having a "topography of rolling hills and vales," which could be used to argue for a more constrained definition requiring a smooth, wave-like, or sinusoidal interface, as opposed to an irregular or jagged one. (’085 Patent, col. 3:39-40).

• The Term: "same coefficient of thermal expansion" (’085 Patent, Claim 1)

• Context and Importance: This term specifies a technical property of the two layers. Practitioners may focus on this term because proving that two different materials have the "same" coefficient, rather than merely "similar" coefficients, presents a high evidentiary bar.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The specification explains the purpose is so the layers "work together and respond similarly when subject to temperature changes and forces," which might support a functional definition where "same" means sufficiently similar to prevent delamination under normal use. (’085 Patent, col. 3:32-34).
  • Evidence for a Narrower Interpretation: A defendant could argue for a literal, scientific definition, requiring the coefficients to be numerically identical or within a very tight tolerance, which may be difficult for the plaintiff to prove.

VI. Other Allegations

• Indirect Infringement: The complaint alleges induced infringement for both patents. It asserts that after May 20, 2016, Defendant "aided or otherwise acted to induce third party distributors," including Sears, Buy.com, and Amazon, to sell the infringing products. (Compl. ¶¶ 24, 45). The alleged basis is the act of supplying the products to these distributors with the knowledge and intent that they would be sold in infringement of the patents.
• Willful Infringement: The complaint alleges willful infringement for both patents, asserting that Defendant was "informed and aware" of the patents as early as May 20, 2016, and thereafter acted with knowledge or willful blindness that its actions would cause infringement. (Compl. ¶¶ 23, 25, 44, 46).

VII. Analyst’s Conclusion: Key Questions for the Case

• The single most critical issue in this case is the legal status of the patents-in-suit. The subsequent cancellation of all asserted claims in both the '085 and '764 patents through ex parte re-examination, an event occurring after the complaint was filed, effectively eliminates the legal basis for the infringement action. A primary question for the court would be the procedural impact of these cancellations on the pending litigation.
• Assuming the claims were still valid, a key evidentiary question for the '085 patent would be one of internal structure: what evidence could Plaintiff provide to demonstrate that the accused products, which are sold as sealed units, possess the specific "undulating inner boundary" required by claim 1, as opposed to a simple flat adhesive layer?
• For the '764 design patent, a central question would be one of ornamental scope: would an ordinary observer consider the patented design, which shows an unadorned surface, to be substantially the same as accused products that are marketed with distinct surface textures like "carpet" and "wood," or do these textures create a different overall visual appearance that avoids infringement?