DCT
1:16-cv-02703
Cocona Inc v. VF Outdoor LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Cocona Inc (Delaware)
- Defendant: Columbia Sportswear North America Inc (Oregon); VF Outdoor Inc (Delaware)
- Plaintiff’s Counsel: Kutak Rock LLP
- Case Identification: 1:16-cv-02703, USDC Colorado, 12/07/2016
- Venue Allegations: Venue in the District of Colorado is based on Defendants’ sales of accused products within the district, derivation of substantial revenue from the district, and systematic and continuous business contacts.
- Core Dispute: Plaintiff alleges that Defendants’ waterproof-breathable laminates, used in performance apparel and marketed under the "Omni-Wick EVAP" and "DRYVENT™ 2.5L" brands, infringe a patent related to membranes enhanced with active particles.
- Technical Context: The technology resides in the field of advanced textiles for performance and outdoor apparel, where waterproofness and breathability are critical and highly competitive features.
- Key Procedural History: The complaint alleges that both Defendants engaged in licensing discussions with the Plaintiff regarding the patented technology prior to launching the accused products. Subsequent to the filing of this complaint, the asserted patent was the subject of an Inter Partes Review (IPR2018-00190), which resulted in the cancellation of asserted claims 27, 35, 36, and 37. Asserted dependent claims 38 and 39, which add a "removable encapsulant" limitation, were confirmed as patentable. This post-filing development substantially narrows the scope of the dispute to the subject matter of claims 38 and 39.
Case Timeline
| Date | Event |
|---|---|
| 2006-05-09 | ’287 Patent Priority Date |
| 2015-02-03 | ’287 Patent Issue Date |
| 2016-12-07 | Complaint Filing Date |
| 2017-11-15 | Inter Partes Review (IPR2018-00190) Filed |
| 2021-10-25 | IPR Certificate Issued |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,945,287 - Active Particle-Enhanced Membrane and Methods for Making and Using the Same
- Patent Identification: U.S. Patent No. 8,945,287, “Active Particle-Enhanced Membrane and Methods for Making and Using the Same,” issued February 3, 2015.
The Invention Explained
- Problem Addressed: The patent’s background section identifies a need for materials that are both waterproof and breathable. It notes that traditional waterproof materials can feel "hot and humid" because they do not allow moisture vapor to escape, while materials with better moisture transport often lack sufficient waterproofness ('287 Patent, col. 1:40-51). The patent also describes a need for improved anti-static and stealth (e.g., infrared signature reduction) properties in textiles ('287 Patent, col. 1:52-65; col. 2:1-7).
- The Patented Solution: The invention is a composite membrane created by incorporating "active particles," such as activated carbon, into a base material solution like polyurethane ('287 Patent, Abstract). These particles are intended to add or improve desirable properties, including moisture vapor transport, odor adsorption, and anti-static capabilities ('287 Patent, col. 2:23-28). A key aspect of the described method involves potentially protecting the active particles with a "removable encapsulant" during manufacturing to prevent their pores from being clogged or deactivated before the final product is complete ('287 Patent, col. 2:31-41).
- Technical Importance: The technology provides a method for enhancing the secondary performance characteristics of waterproof fabrics, such as breathability and odor control, without compromising the primary waterproof function.
Key Claims at a Glance
- The complaint asserts independent claim 27 and dependent claims 35, 36, 37, 38, and 39 (Compl. ¶16). Note: As discussed in Section I, an IPR has since canceled claim 27 and its dependents other than 38 and 39. The analysis below addresses claim 27 as it forms the basis of the original complaint.
- Independent Claim 27 recites:
- A water-proof breathable membrane comprising:
- a substantially liquid-impermeable cured base material solution comprising a first thickness;
- a plurality of active particles in contact with the substantially liquid-impermeable cured base material solution, wherein the plurality of active particles comprise a second thickness;
- wherein the first thickness is at least 2.5 times larger than the second thickness but less than an order of magnitude larger than the second thickness;
- wherein the active particles are capable of improving the transmission of vapor; and
- the membrane comprises a moisture vapor transmission rate from about 600 g/m²/day to about 11000 g/m²/day.
- The complaint also asserts dependent claims adding limitations for odor absorbance (Claim 35), quick-drying properties (Claim 36), specific particle types (Claim 37), and the use of a removable encapsulant (Claims 38 and 39) (Compl. ¶11-15).
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are garments sold by Columbia Sportswear that incorporate its "Omni-Wick EVAP" laminate and garments sold by VF Outdoor (through its The North Face brand) that incorporate its "DRYVENT™ 2.5L" laminate (Compl. ¶16, ¶33). Specific product lines named include Columbia’s "EvaPOURation" line and The North Face’s "Venture," "Thermoball," and "Fuseform" lines (Compl. ¶21, ¶40).
Functionality and Market Context
- The complaint alleges that both accused laminates are composed of at least two layers: a waterproof breathable membrane and a "print layer" (Compl. ¶23, ¶42).
- This print layer is alleged to "contain porous active particles" that "improve the moisture vapour transport capacity of the composition" (Compl. ¶22, ¶26, ¶41, ¶45).
- The complaint alleges specific thicknesses for the layers. The Columbia membrane is alleged to be 43-48 microns thick with a ~5.4 micron print layer, while the VF Outdoor membrane is alleged to be ~35 microns thick with a ~4 micron print layer (Compl. ¶24, ¶25, ¶43, ¶44).
- The complaint alleges that both defendants generate significant revenue from these products, positioning them as commercially important (Compl. ¶6, ¶32, ¶51).
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
- ’287 Patent Infringement Allegations
| Claim Element (from Independent Claim 27) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a substantially liquid-impermeable cured base material solution comprising a first thickness | The accused "Omni-Wick EVAP" and "DRYVENT™ 2.5L" laminates each contain a "waterproof breathable membrane" alleged to be a liquid-impermeable cured base material with a specified thickness (43-48 microns for Columbia; 35 microns for VF Outdoor). | ¶22, ¶24, ¶41, ¶43 | col. 13:30-33 |
| a plurality of active particles... comprising a second thickness | The "print layer" of the accused laminates is alleged to contain "porous active particles." The thickness of this print layer is alleged to be approximately 5.4 microns for Columbia and 4 microns for VF Outdoor. | ¶25, ¶26, ¶44, ¶45 | col. 13:34-36 |
| the first thickness is at least 2.5 times larger than the second thickness but less than an order of magnitude larger than the second thickness | The alleged dimensions of the membrane (first thickness) and print layer (second thickness) for both accused product lines result in a ratio that falls within the claimed range of 2.5x to <10x. (Columbia: ~8-9x; VF Outdoor: ~8.75x). | ¶24, ¶25, ¶43, ¶44 | col. 13:39-44 |
| the active particles are capable of improving the transmission of vapor | The complaint directly alleges that the active particles in the accused products improve the moisture vapor transport capacity. | ¶22, ¶41 | col. 13:37-39 |
| the membrane comprises a moisture vapor transmission rate from about 600 g/m²/day to about 11000 g/m²/day | The complaint alleges the accused Columbia products have a rate greater than 600 g/m²/day and the VF Outdoor products have a rate greater than 750-800 g/m²/day, both falling within the claimed range. | ¶27, ¶46 | col. 14:20-22 |
- Identified Points of Contention:
- Scope Questions: A central question may be whether the defendants' "print layer" constitutes the claimed "plurality of active particles," or if it is a separate matrix material containing said particles. The claim language "a plurality of active particles... comprising a second thickness" raises the question of whether the "second thickness" refers to the dimensions of the particles themselves or the aggregate layer in which they are embedded. The complaint's infringement theory appears to rely on the latter interpretation.
- Technical Questions: The complaint alleges the accused print layers "contain" active particles (Compl. ¶26, ¶45). The court may need to determine the actual composition of this layer. Evidence will be required to establish whether this layer is primarily composed of active particles (as the claim might be construed to require) or is a binder with particles suspended within it, which could present a mismatch with the claim language.
V. Key Claim Terms for Construction
- The Term: "a plurality of active particles ... comprising a second thickness"
- Context and Importance: The construction of this term is critical for the infringement analysis of the dimensional limitation (the ratio of the first and second thicknesses). The plaintiff’s allegations appear to equate the thickness of the entire "print layer" with the "second thickness" of the "plurality of active particles" (Compl. ¶24-25, ¶43-44). Practitioners may focus on this term because the viability of the infringement allegation for this quantitative limitation depends entirely on how the "second thickness" is measured.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not explicitly define how the "second thickness" should be measured for a plurality of particles. A party could argue that in the context of a membrane coating or layer, the most reasonable interpretation is the thickness of the particle-containing layer as a whole, as this is the functional dimension that interacts with the base material layer.
- Evidence for a Narrower Interpretation: The claim language recites the thickness of the "plurality of active particles," not a "layer containing active particles." A party could argue this refers to the average diameter of the individual particles themselves. The specification discusses particle characteristics but does not specify that they form a layer of a certain thickness, which may support an argument that the claim is directed to the particles' individual dimensions, not the layer they are in.
VI. Other Allegations
- Indirect Infringement: The complaint does not plead a separate count for indirect infringement. The allegations focus on direct infringement by the defendants for making, using, and selling the accused products (Compl. ¶55, ¶61).
- Willful Infringement: The complaint alleges that the infringement by both Columbia and VF Outdoor has been "knowing, intentional, and willful" (Compl. ¶56, ¶62). The factual basis for this allegation is the defendants' alleged pre-suit knowledge of the ’287 Patent, which they allegedly gained during prior business and licensing negotiations with Cocona where Cocona's proprietary technology was disclosed (Compl. ¶17-19, ¶34-35, ¶53).
VII. Analyst’s Conclusion: Key Questions for the Case
- Impact of Intervening IPR: Given that the IPR proceeding has canceled the asserted independent claim (Claim 27), a threshold question is how the case can proceed on dependent claims 38 and 39. The dispute will narrow to the added limitation of a "removable encapsulant," and the parties will likely contest whether this feature was present in the accused manufacturing processes.
- Claim Construction of Thickness: A core issue for any surviving claims will be one of definitional scope: how should the court construe "a plurality of active particles comprising a second thickness"? The case may turn on whether this refers to the aggregate thickness of the particle-containing "print layer" (as the complaint's numerical allegations require) or the characteristic diameter of the individual particles.
- Evidentiary Proof of Willfulness: A key factual question will be the substance of the alleged pre-suit licensing negotiations. The court will need to examine what specific information was disclosed to the defendants and whether that disclosure is sufficient to establish the "subjective willfulness" required for enhanced damages, particularly in light of any non-infringement or invalidity defenses the defendants may have developed.