DCT
8:24-cv-00674
Jacuzzi Brands LLC v. BCI Acrylic Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Jacuzzi Brands LLC and Jacuzzi Inc. (Delaware / California)
- Defendant: BCI Acrylic, Inc. (Illinois)
- Plaintiff’s Counsel: Hueston Hennigan LLP
- Case Identification: 8:24-cv-00674, C.D. Cal., 03/28/2024
- Venue Allegations: Plaintiff Jacuzzi asserts that venue is proper in the Central District of California because it is headquartered in the district, the accused products were designed and marketed from the district, and the Defendant’s cease-and-desist letter giving rise to the dispute was received there.
- Core Dispute: Plaintiff seeks a declaratory judgment that its method for manufacturing textured wall paneling does not infringe Defendant’s patent, which is directed to a method for creating simulated tile walls using a computer-controlled router.
- Technical Context: The technology concerns methods for manufacturing simulated tile wall panels from acrylic sheets for use in wet environments like showers, offering a customizable alternative to traditional ceramic tile installation.
- Key Procedural History: The action was precipitated by a March 5, 2024 cease-and-desist letter from Defendant BCI to Plaintiff Jacuzzi. The complaint notes that during the prosecution of the patent-in-suit, the originally filed claims were rejected by the USPTO as being directed to an abstract idea and as anticipated by prior art, which prompted amendments that led to the issued claims. The complaint also notes that BCI has previously filed at least two other lawsuits asserting infringement of the same patent.
Case Timeline
| Date | Event |
|---|---|
| 2015-02-18 | '243 Patent Priority Date |
| 2016-02-18 | '243 Patent Application Filing Date |
| 2018-02-06 | Patent Examiner rejects application claims |
| 2018-06-04 | Applicant revises claims in response to rejection |
| 2018-12-04 | U.S. Patent No. 10,144,243 Issues |
| 2024-01-22 | Jacuzzi launches accused textured grout wall products |
| 2024-03-05 | BCI sends cease-and-desist letter to Jacuzzi |
| 2024-03-28 | Complaint for Declaratory Judgment Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,144,243 - “Method for Creating Simulated Tile Wall”
The Invention Explained
- Problem Addressed: The patent’s background section describes prior art methods for making simulated tile walls from acrylic sheets as being cumbersome and costly (Compl. ¶11; ’243 Patent, col. 1:45-53). These methods required heating an acrylic sheet, pressing it into a physical mold, and using a vacuum to form the pattern, a process that necessitated the creation and storage of a unique, expensive mold for each different tile design (’243 Patent, col. 1:28-53).
- The Patented Solution: The invention claims a method that avoids molds, heat, and vacuums by using a computer-controlled router to engrave simulated grout lines directly into an acrylic sheet (’243 Patent, Abstract). A user first defines a set of tile pattern characteristics (e.g., shape, size, orientation), which are stored in a computer database that controls the router (’243 Patent, col. 2:48-62). The router then follows the stored digital instructions to cut the pattern into the sheet, allowing for a wide variety of designs to be produced without creating new physical molds (’243 Patent, col. 3:11-23).
- Technical Importance: The claimed method allows for “limitless customization” of tile patterns on a sheet-by-sheet basis, eliminating the significant time and expense associated with creating and managing physical molds required by prior art processes (’243 Patent, col. 3:28-32).
Key Claims at a Glance
- The complaint focuses on independent Claim 1.
- Essential elements of Claim 1 include:
- a. determining a first set of tile pattern characteristics comprising the steps of: (i) determining a first set of tile shapes, (ii) determining an orientation of the first set of tile shapes on the simulated tile sheet, (iii) determining a first set of tile dimensions, (iv) determining a depth of cut in the simulated tile sheet,
- b. entering the first set of tile pattern characteristics into a computer and storing the first set of tile pattern characteristics digitally in a database in a computer controlled material removal tool;
- c. selecting a first sheet of acrylic material based on the first set of tile pattern characteristics, the first sheet of acrylic material having a top displayed surface;
- d. placing the first sheet of acrylic material below the computer controlled material removal tool;
- e. retrieving the first set of tile pattern characteristics stored in the database; and
- f. forming a first set of grout lines by removing from the top displayed surface of the first sheet of acrylic material by means of the computer controlled material removal tool a first predetermined amount of material based on the first set of tile pattern characteristics to create the first set of tile pattern characteristics in the first sheet of acrylic material.
- The complaint notes that all other claims of the ’243 Patent (Claims 2-7) are dependent on Claim 1 (Compl. ¶30).
III. The Accused Instrumentality
Product Identification
The complaint identifies Jacuzzi’s "textured grout wall paneling" products and the method by which they are manufactured as the subject of BCI’s infringement accusations (Compl. ¶¶ 3, 13, 38).
Functionality and Market Context
The complaint alleges that Jacuzzi’s manufacturing method differs from the patented method in at least one critical respect (Compl. ¶38). Specifically, Jacuzzi asserts that its process for selecting acrylic sheets is “based simply on the size of acrylic sheet needed for the bathroom installation,” rather than being “based on any ‘tile pattern characteristics’” as required by the patent’s claims (Compl. ¶38). Jacuzzi launched this new product line of "designer wall paneling" on January 22, 2024 (Compl. ¶31). An advertisement attached to BCI's cease-and-desist letter depicts Jacuzzi's "Textured Grout Subway shower wall paneling" (Compl. ¶34, referencing Ex. 2 at Ex. B).
IV. Analysis of Infringement Allegations
’243 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a. determining a first set of tile pattern characteristics comprising the steps of: i. determining a first set of tile shapes... [etc.] | BCI’s cease-and-desist letter alleges that Jacuzzi uses the claimed method to create its simulated tile walls (Compl. ¶35). The complaint does not contest that Jacuzzi determines tile pattern characteristics for its products. | ¶35, ¶38 | col. 3:41-48 |
| b. entering the first set of tile pattern characteristics into a computer and storing... digitally in a database in a computer controlled material removal tool | BCI’s letter accuses Jacuzzi of using a “computer-controlled material removal tool to form grout lines,” implying the use of a digital database to store patterns (Compl. ¶36). Jacuzzi does not specifically deny this step. | ¶36 | col. 3:49-53 |
| c. selecting a first sheet of acrylic material based on the first set of tile pattern characteristics... | This is the central point of dispute. Jacuzzi alleges its manufacturing method “does not involve ‘selecting a first sheet of acrylic material based on [a] first set of tile pattern characteristics’” (Compl. ¶38). Jacuzzi claims its selection is based only on the size needed for installation, not on the tile pattern (Compl. ¶38). | ¶38 | col. 4:1-4 |
| d. placing the first sheet of acrylic material below the computer controlled material removal tool | The complaint does not specifically address this mechanical step. | N/A | col. 4:5-7 |
| e. retrieving the first set of tile pattern characteristics stored in the database | The complaint does not specifically address this data retrieval step. | N/A | col. 4:8-9 |
| f. forming a first set of grout lines by removing from the top displayed surface... by means of the computer controlled material removal tool... | BCI’s letter accuses Jacuzzi of “manufacturing [of] its simulated tile walls by using a computer-controlled material removal tool to form grout lines” (Compl. ¶36). Jacuzzi’s general denial of infringement covers this step (Compl. ¶39). | ¶36, ¶39 | col. 4:10-21 |
Identified Points of Contention
- Technical Question: The primary factual dispute will be whether Jacuzzi’s process for selecting acrylic sheets is, in fact, "based on" the tile pattern characteristics. The case will require evidence detailing Jacuzzi’s manufacturing workflow to determine if there is any causal link between the chosen tile pattern and the selection of the raw acrylic sheet, or if the selection is, as Jacuzzi alleges, driven solely by the physical dimensions required for installation (Compl. ¶38).
- Scope Questions: A legal dispute over the meaning of the claim phrase "based on" is likely. The court will need to determine the scope of this causal relationship. The question is whether this limitation requires the tile pattern details (e.g., shape, depth of cut) to substantively influence the choice of material (e.g., requiring a thicker or different grade of acrylic), or if it is satisfied by a looser connection, such as selecting a sheet that is large enough to accommodate a pre-determined pattern.
V. Key Claim Terms for Construction
- The Term: "selecting a first sheet of acrylic material based on the first set of tile pattern characteristics"
- Context and Importance: This limitation from claim 1(c) is the foundation of Jacuzzi’s non-infringement argument as stated in the complaint (Compl. ¶38). The construction of the phrase "based on" will be critical. Practitioners may focus on this term because its interpretation will likely resolve whether Jacuzzi's alleged practice—selecting material based only on installation size—falls inside or outside the scope of the claim.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party arguing for a broader reading might contend that any selection of a material that occurs after the pattern characteristics have been determined is implicitly "based on" them, as the selected sheet must be suitable for receiving the specified pattern. The specification does not contain explicit language limiting the basis of selection, which could support an argument that the term should not be narrowly constrained.
- Evidence for a Narrower Interpretation: A party arguing for a narrower reading will likely point to the prosecution history, where this limitation was added to overcome rejections under 35 U.S.C. §§ 101 and 102 (Compl. ¶¶ 28-29). This history suggests the limitation was added to impart a meaningful process step, not a trivial one. Furthermore, the specification's only example of sheet selection refers to its physical dimensions ("a sheet of acrylic 60 by 40 inches"), with no mention of the selection being influenced by the characteristics of the pattern to be engraved on it (’243 Patent, col. 2:45-47). This could support an interpretation that "based on" requires the pattern itself, not just its eventual placement on a sized sheet, to drive the material selection.
VI. Other Allegations
- Indirect Infringement: As this is a declaratory judgment action for non-infringement, the complaint denies all forms of infringement, stating Jacuzzi "does not directly, contributorily, or by inducement, infringe any claims of the '243 Patent" (Compl. ¶41). It does not outline a specific factual basis for potential indirect infringement allegations by BCI.
- Willful Infringement: Willfulness is not alleged in the complaint. However, the complaint confirms Jacuzzi's receipt of BCI's March 5, 2024 cease-and-desist letter, which provided actual notice of the patent and BCI's infringement allegations (Compl. ¶¶ 32-33). This fact would be central to any future claim by BCI that post-notice infringement by Jacuzzi was willful.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim scope and factual proof: What level of causation is required by the claim term "based on," and what evidence will show whether Jacuzzi's material selection process—which it claims is driven only by installation size—meets that standard? The resolution will depend on both the court’s construction of the claim language and the factual record developed in discovery regarding Jacuzzi's manufacturing methods.
- A key legal question will be the impact of prosecution history: How will the court interpret the addition of the "selecting... based on" limitation during prosecution? The fact that it was added to overcome both patentability and patent-eligibility rejections suggests it must be given substantive weight, a factor that will heavily influence the claim construction analysis.