DCT

1:17-cv-01574

Dasso Intl Inc v. Moso North America Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: Dasso International, Inc. et al v. MOSO North America, Inc. et al, 1:17-cv-01574, D. Del., 02/02/2018
  • Venue Allegations: Venue is alleged to be proper in Delaware because Defendant MOSO North America, Inc. is a Delaware corporation and thus resides in the district. Venue over MOSO International BV is based on alleged acts of infringement in the district, including importation, and having a regular and established place of business through its U.S. subsidiary.
  • Core Dispute: Plaintiffs allege that Defendants' "Bamboo X-Treme" decking products, which are imported and sold in the U.S., infringe a patent covering a specialized manufacturing process for durable, heat-treated bamboo building materials.
  • Technical Context: The technology relates to the manufacturing of engineered bamboo products, known as "scrimber," designed to have enhanced dimensional stability and biological durability for use in outdoor environments.
  • Key Procedural History: This Second Amended Complaint alleges a complex business dispute alongside the patent claim. It asserts that former senior employees of Plaintiff Easoon conspired with Defendant MOSO to establish a competing U.S. entity, misappropriated customers and proprietary information, and began importing products made by a patented process for which Plaintiffs hold exclusive U.S. distribution rights. The complaint anticipates and attempts to preempt a patent exhaustion defense by alleging that the sales of the accused products from the foreign manufacturer to Defendants were not authorized.

Case Timeline

Date Event
2008-04-18 '578 Patent Priority Date
2013-05-15 Brett Kelly appointed President of Plaintiff Easoon's Dasso.XTR Division
2014-04-29 U.S. Patent No. 8,709,578 Issued
2015-01-01 Zhuanghe Factory, alleged manufacturer of both parties' products, is built
2017-04-17 Email exchange between Easoon employee and MOSO Director of Sales
2017-06-07 Defendant MOSO North America, Inc. incorporated in Delaware
2017-06-11 Easoon employee Brett Kelly resigns
2017-06-11 MOSO President allegedly informed that U.S. sales would be unauthorized
2017-06-19 Two other senior Easoon employees depart
2017-08-01 Defendants allegedly begin importing accused products into the U.S.
2018-02-02 Second Amended Complaint Filed

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

U.S. Patent No. 8,709,578 - "Bamboo Scrimber and Manufacturing Method Thereof"

The Invention Explained

  • Problem Addressed: The patent's background describes shortcomings in conventional methods for producing "bamboo scrimber" (recombined bamboo products) ('578 Patent, col. 1:25-35). Conventional products are described as susceptible to cracking, deforming, and biological decay when used outdoors, primarily because bamboo is a porous material that readily absorbs moisture and contains nutrients that attract fungi ('578 Patent, col. 1:57-col. 2:5).
  • The Patented Solution: The invention addresses these problems through a specific manufacturing process and the resulting product. The process involves cutting bamboo into strips, forming a plurality of slots along the fiber direction, and then subjecting the strips to a multi-stage heat treatment ('578 Patent, col. 2:20-33). This heat treatment is designed to pyrolyze (thermally decompose) the hemicelluloses in the bamboo, which reduces its ability to absorb water and removes nutrients for decay fungi, thereby improving dimensional stability and durability ('578 Patent, col. 3:5-24). The slots facilitate more uniform adhesive impregnation and pressing ('578 Patent, col. 2:56-65; col. 5:4-8). The final product is a dense, stable bamboo material comprised of these modified, adhesive-impregnated, and pressure-pressed strips.
  • Technical Importance: This patented approach claims to produce a bamboo material with low water absorption and high dimensional stability, making it "especially suitable for outdoor environments" where conventional bamboo products might fail ('578 Patent, col. 3:62-65).

Key Claims at a Glance

  • The complaint asserts infringement of one or more claims, with a focus on Claim 1 (Compl. ¶108).
  • Independent Claim 1 of the ’578 Patent recites the following essential elements for a "bamboo scrimber":
    • A plurality of pressure-pressed bamboo strips impregnated with an adhesive.
    • The strips are "modified through heat-treatment so that at least a part of hemicelluloses in said bamboo strips is pyrolysized."
    • Each strip is formed with a "plurality of slots penetrating through said bamboo strip."
    • The slots run in a longitudinal direction consistent with the bamboo fibers.
  • The complaint’s general allegation of infringing "one or more claims" suggests the right to assert dependent claims is preserved (Compl. ¶108).

III. The Accused Instrumentality

Product Identification

  • The accused products are sold under the brand name "MOSO Bamboo X-Treme" (Compl. ¶28, 107).

Functionality and Market Context

  • The complaint alleges the accused products are exterior bamboo decking materials (Compl. ¶¶15, 30). Central to the lawsuit is the allegation that the accused MOSO product is "the exact same product as Dasso's '578 Product," which is sold by Plaintiff Easoon under the "Dasso.XTR" brand (Compl. ¶81, 107). The complaint further alleges that both products are manufactured at the same facility, the Zhuanghe Factory in China, using the same patented process, but that Defendants lack authorization to distribute the product in the United States (Compl. ¶¶24-26, 31, 110-111).

IV. Analysis of Infringement Allegations

The complaint references a claim chart attached as Exhibit 3 to demonstrate infringement, but this exhibit was not included with the filed complaint document (Compl. ¶108). No probative visual evidence provided in complaint.

The complaint's narrative infringement theory is based on product identity. It alleges that Defendants are importing, marketing, and selling a product in the U.S. that is identical to Plaintiffs' own patented product (Compl. ¶¶107, 111). The core factual assertion is that the accused "MOSO Bamboo X-Treme" products are manufactured in the Zhuanghe Factory "according to the '578 Patent" (Compl. ¶110). Because the accused product is allegedly made using the patented method, Plaintiffs contend that it necessarily embodies all limitations of the asserted claims, including the heat treatment that results in pyrolyzed hemicelluloses and the formation of longitudinal slots in the bamboo strips (Compl. ¶108). The alleged infringement is therefore the importation and sale of this product in the U.S. (Compl. ¶103).

  • Identified Points of Contention:
    • Factual Question: A central issue will be whether Plaintiffs can produce evidence to support the allegation that the accused MOSO products are, in fact, manufactured using the specific multi-step process claimed in the ’578 Patent. The dispute may turn on evidence from the common manufacturer or technical analysis of the accused products themselves.
    • Legal Question (Patent Exhaustion): The complaint anticipates a patent exhaustion defense. A key legal dispute will be whether the sale of the products from the Zhuanghe Factory to Defendant MOSO was an authorized sale that would exhaust the patentee's rights to control the product's downstream sale in the U.S. Plaintiffs allege these sales were explicitly unauthorized (Compl. ¶¶67, 94, 106).
    • Technical Question: The infringement analysis may require a technical determination of whether the heat treatment applied to the accused products is sufficient to cause the bamboo's hemicelluloses to become "pyrolysized" as required by the claim.

V. Key Claim Terms for Construction

  • The Term: "modified through heat-treatment so that at least a part of hemicelluloses in said bamboo strips is pyrolysized"
  • Context and Importance: This limitation defines the core chemical transformation that allegedly imparts the improved durability central to the invention. Proving that the accused product undergoes this specific modification is essential to Plaintiffs' infringement case. Practitioners may focus on this term because its construction will determine the type and extent of chemical change that must be proven.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim language "at least a part" could support a construction that does not require complete or substantial decomposition of hemicelluloses ('578 Patent, col. 11:40-41). The specification also provides a wide temperature range for pyrolysis, from 150°C to 220°C, which could suggest that any heat treatment within this range qualifies ('578 Patent, col. 12:43-44).
    • Evidence for a Narrower Interpretation: The specification repeatedly emphasizes that "most hemicelluloses or nearly all the hemicelluloses" are pyrolyzed to achieve the invention's anti-corrosion and stability benefits ('578 Patent, col. 3:5-7, 5:4-7). A party could argue this context requires a showing of substantial, not merely incidental, pyrolysis that results in the specific functional advantages described in the patent.

VI. Other Allegations

  • Indirect Infringement: The complaint's factual allegations focus on direct infringement through the importation and sale of a finished product made by a patented process (Compl. ¶103). While the prayer for relief includes language seeking to enjoin inducement and contribution, the body of the complaint does not articulate a separate theory for indirect infringement (Compl. p. 30-31, ¶B).
  • Willful Infringement: The complaint alleges that Defendants' infringement was "intentional and deliberate" (Compl. ¶104) and "willful" (Compl. ¶103). The factual basis for this allegation includes numerous alleged meetings and communications where Defendant MOSO's president was explicitly warned by Plaintiffs' business partner (HDT) that MOSO lacked authority to sell the product in the U.S. and that doing so would infringe Dasso's patent rights (Compl. ¶¶67, 94, 104). The complaint further alleges that MOSO’s president acknowledged the lack of rights but decided to enter the U.S. market regardless, stating MOSO "would live with the consequences" (Compl. ¶78).

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

  • A central evidentiary question will be one of manufacturing process: Can Plaintiffs prove that Defendants' accused bamboo decking is in fact made using the specific slotting and multi-stage heat treatment process described and claimed in the ’578 Patent, a theory that rests heavily on the allegation that both parties source an identical product from the same factory?
  • A dispositive legal question will be one of patent exhaustion: Did the sale of the accused products from the foreign manufacturer to Defendants constitute an authorized sale that exhausted the patentee's rights, or was it an unauthorized transaction that gives rise to infringement upon importation into the U.S., as the complaint alleges?
  • A key technical question will be one of definitional scope: What degree of chemical change is required for hemicelluloses to be considered "pyrolysized" under the patent's claims, and does the process used to make the accused products meet that standard?