Cocona Inc v. Columbia Sportswear Co

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Cocona, Inc. (Delaware)
  • Defendant: Columbia Sportswear Company (Oregon)
  • Plaintiff’s Counsel: Kutak Rock LLP
• Case Identification: 1:17-cv-01195, D. Colo., 05/25/2017
• Venue Allegations: Plaintiff alleges venue is proper in the District of Colorado because Defendant sells the accused products in the district and operates at least two retail stores there.
• Core Dispute: Plaintiff alleges that Defendant’s high-performance apparel containing "Omni-Wick EVAP" technology infringes a patent related to active particle-enhanced waterproof and breathable membranes.
• Technical Context: The technology at issue involves advanced textiles for the outdoor and athletic apparel market, where properties like waterproofing and breathability are key performance differentiators.
• Key Procedural History: The complaint alleges that prior to infringement, the parties engaged in unsuccessful licensing negotiations during which Plaintiff disclosed its proprietary manufacturing methods to Defendant. Subsequent to the filing of this complaint, the asserted patent was the subject of an Inter Partes Review (IPR2018-00190). The IPR resulted in the cancellation of the asserted independent claim (Claim 27) and several asserted dependent claims (35-37), while finding other asserted dependent claims (38 and 39) patentable. This post-filing development significantly narrows the scope of the dispute to the surviving claims.

Case Timeline

Date	Event
2006-05-09	U.S. Patent No. 8,945,287 Priority Date
2015-02-03	U.S. Patent No. 8,945,287 Issues
2017-05-25	Complaint Filed
2017-11-15	Inter Partes Review (IPR2018-00190) Filed
2021-10-25	IPR Certificate Issued, Cancelling Claims 27, 35-37

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 ("the ’287 Patent"), "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 ('287 Patent, col. 1:12-22). Conventional waterproof materials like rubber can feel "hot and humid" because they do not allow moisture vapor (sweat) to escape, while materials that are breathable may not be sufficiently waterproof ('287 Patent, col. 1:41-48).
• The Patented Solution: The invention claims to solve this problem by creating a membrane from a base material (e.g., polyurethane) that is enhanced with "active particles," such as activated carbon ('287 Patent, Abstract; col. 3:41-44). These microscopic particles are intended to increase the material's ability to transport moisture vapor, while also potentially adding other benefits like odor absorption or anti-static properties ('287 Patent, col. 2:23-31). The patent also describes a method of protecting these particles with a "removable encapsulant" to prevent them from losing their activity during manufacturing ('287 Patent, col. 2:31-41; FIG. 1).
• Technical Importance: This technology aims to improve the performance of fabrics used in applications like rain gear and athletic apparel, where managing moisture from both the outside environment and the wearer is critical for comfort and function ('287 Patent, col. 1:33-41).

Key Claims at a Glance

• The complaint asserts independent claim 27 and dependent claims 35, 36, 37, 38, and 39 (Compl. ¶15). As noted, an IPR proceeding subsequent to the complaint's filing cancelled claim 27 and claims 35-37. The analysis below focuses on claim 27 as it forms the basis of the complaint's allegations.
• Independent Claim 27 (Asserted in Complaint, Now Cancelled):
  • A water-proof composition comprising: a liquid-impermeable breathable cured base material comprising a first thickness;
  • a plurality of active particles in contact with the liquid-impermeable breathable cured base material, the plurality of active particles comprising a second thickness;
  • wherein the first thickness comprises a thickness at least 2.5 times larger than the second thickness but less than an order of magnitude larger than the second thickness;
  • the active particles improve the moisture vapor transport capacity of the composition; and
  • a moisture vapor transmission rate of the water-proof composition comprises from about 600 g/m²/day to about 11000 g/m²/day.

III. The Accused Instrumentality

Product Identification

• The accused instrumentalities are garments, including jackets and pants, that incorporate a laminate marketed by Columbia under the name "Omni-Wick EVAP" (Compl. ¶15). Specific product lines mentioned include those sold under the name "EvaPOURation" (Compl. ¶20).

Functionality and Market Context

• The complaint alleges that the accused "Omni-Wick EVAP" laminate is constructed from at least two distinct layers: a "waterproof breathable membrane" and a "print layer" (Compl. ¶22).
• The print layer is alleged to contain "porous active particles" that "improve the moisture vapour transport capacity of the composition" (Compl. ¶21, ¶25). This functionality is central to Columbia's marketing of the products for use in high-exertion outdoor activities.

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 water-proof composition comprising: a liquid-impermeable breathable cured base material comprising a first thickness...	The accused laminate includes a "waterproof breathable membrane" layer, which is alleged to be a "liquid-impermeable cured base material." The complaint alleges this layer has a thickness between 43 and 48 microns.	¶22, ¶23	col. 1:15-22
a plurality of active particles in contact with the liquid-impermeable breathable cured base material, the plurality of active particles comprising a second thickness...	The accused laminate's "print layer" allegedly contains "porous active particles comprised of silicon, oxygen, and carbon." This layer is alleged to be approximately 5.4 microns thick.	¶24, ¶25	col. 4:5-7
the first thickness comprises a thickness at least 2.5 times larger than the second thickness but less than an order of magnitude larger than the second thickness...	The alleged thickness of the base material (43-48 microns) is between 7.9 and 8.9 times larger than the alleged thickness of the particle-containing print layer (5.4 microns), a ratio that falls within the claimed range.	¶23, ¶24	col. 14:7-10
the active particles improve the moisture vapour transport capacity of the composition...	The complaint explicitly alleges that in the accused products, "the active particles improve the moisture vapour transport capacity of the composition."	¶21	col. 2:26-29
a moisture vapor transmission rate of the water-proof composition comprises from about 600 g/m²/day to about 11000 g/m²/day.	The complaint alleges that all products containing the accused laminate "have a moisture vapor transmission rate greater than 600 g/sq. meter/24 hour period."	¶26	col. 14:14-17

Identified Points of Contention

• Scope Questions: A potential dispute may arise over the definition of "active particles." The complaint alleges the particles are "comprised of silicon, oxygen, and carbon" (Compl. ¶25). The litigation may focus on whether this composition meets the functional and structural requirements of "active particles" as defined and exemplified in the ’287 Patent specification (e.g., activated carbon, silica gel) ('287 Patent, col. 4:21-27).
• Technical Questions: The complaint describes the accused product as having two separate layers: a "membrane" and a "print layer" (Compl. ¶22). This raises the question of whether a distinct printed layer on top of a base membrane satisfies the claim limitation requiring active particles to be "in contact with" the base material, or if the patent requires the particles to be more integrally mixed within the base material solution itself.

V. Key Claim Terms for Construction

The Term: "active particles"

• Context and Importance: This term is fundamental to the invention. Its construction will determine whether the materials used in Columbia’s "print layer" fall within the scope of the claims. Practitioners may focus on this term because the complaint's description of the particles as "comprised of silicon, oxygen, and carbon" (Compl. ¶25) is not an exact match for the primary examples in the patent.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The patent provides a functional definition, stating that particles are "active"... because they have the capacity to cause chemical reactions at the surface or physical reactions, such as, adsorb or trap substances" ('287 Patent, col. 4:5-9). This suggests the term is not limited to specific chemical compositions but to any particle that performs this function.
  • Evidence for a Narrower Interpretation: The patent provides a specific, albeit non-exhaustive, list of materials for active particles, such as "activated carbon, aluminum oxide (activated alumina), silica gel, soda ash... zinc oxide, zeolites, titanium dioxide," etc. ('287 Patent, col. 4:21-27). A party may argue that the term should be construed in light of these specific embodiments.

The Term: "in contact with"

• Context and Importance: The structural relationship between the particles and the base material is a key element of the claim. The complaint’s allegation of a separate "print layer" (Compl. ¶22) makes the interpretation of this term critical to the infringement analysis.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The patent describes a process where a mixture is "applied to a substrate" ('287 Patent, col. 7:10-11). This could be interpreted to mean forming a distinct layer on a surface, which would support a finding that a separate print layer is "in contact with" the base membrane.
  • Evidence for a Narrower Interpretation: The patent’s description of the process involves steps to "mix together active particles and base solution" to create a "mixture having a uniform consistency" ('287 Patent, FIG. 1, step 130; col. 7:1-2). This may support an interpretation that the particles must be dispersed within the base material, not merely applied as a separate, subsequent layer.

VI. Other Allegations

• Willful Infringement: The complaint alleges that Defendant’s infringement was and continues to be "knowing, intentional, and willful" (Compl. ¶36). This allegation is based on alleged pre-suit knowledge of the ’287 Patent arising from business meetings where the parties discussed licensing the patented technology (Compl. ¶16, ¶33). During these negotiations, Plaintiff allegedly "disclosed to Columbia and its agents Cocona’s proprietary method of manufacturing products that practice the inventions taught by the '287 Patent" (Compl. ¶17).

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

• A threshold issue will be the viability and scope of the surviving claims: Following the IPR that cancelled independent claim 27, the case hinges on the enforceability of dependent claims 38 and 39. The court must first address how these claims survive the cancellation of their parent claim and what their final scope is for the infringement analysis.
• A central technical dispute will be one of structural correspondence: Does the accused product's two-layer construction, comprising a base membrane and a separate "print layer," meet the "in contact with" limitation of the claims, or does the patent require the particles to be integrated directly into the base material matrix?
• A key factual question will concern evidence of willful infringement: What specific technical information was exchanged during the alleged pre-suit licensing negotiations, and do those communications establish that Defendant had knowledge of the patent and acted with egregious disregard for Plaintiff's patent rights?