DCT
1:19-cv-00342
Huber Engineered Woods LLC v. Louisiana Pacific Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Huber Engineered Woods LLC (Delaware)
- Defendant: Louisiana-Pacific Corporation (Delaware)
- Plaintiff’s Counsel: Morris, Nichols, Arsht & Tunnell LLP; Merchant & Gould P.C.
- Case Identification: 1:19-cv-00342, D. Del., 01/04/2022
- Venue Allegations: Venue is alleged to be proper in the District of Delaware because Defendant is incorporated in Delaware.
- Core Dispute: Plaintiff alleges that Defendant’s WeatherLogic Air & Water Barrier system, which includes structural panels and sealing tape, infringes a portfolio of eight patents related to integrated building sheathing systems.
- Technical Context: The technology concerns structural wood panels used in building construction that have an integrated water-resistive and air barrier layer, designed to eliminate the need for a separate house wrap or felt paper layer.
- Key Procedural History: The complaint alleges that Defendant was on notice of the patents prior to the original complaint, filed February 18, 2019, due to industry awareness of Plaintiff's prior litigation against Georgia-Pacific Wood Products LLC involving some of the same patents. Certificates of Correction were issued for several of the patents-in-suit during the course of the litigation.
Case Timeline
| Date | Event |
|---|---|
| 2004-02-23 | Earliest Priority Date for all Patents-in-Suit |
| c. 2006-01-01 | Plaintiff's ZIP System Sheathing first sold |
| 2013-07-02 | U.S. Patent No. 8,474,197 Issued |
| 2015-04-21 | U.S. Patent No. 9,010,044 Issued |
| 2016-07-05 | U.S. Patent No. 9,382,713 Issued |
| 2017-01-17 | U.S. Patent No. 9,546,479 Issued |
| 2017-06-27 | U.S. Patent No. 9,689,159 Issued |
| 2017-07-04 | U.S. Patent No. 9,695,588 Issued |
| 2017-07-11 | U.S. Patent No. 9,702,140 Issued |
| 2018-09-11 | U.S. Patent No. 10,072,415 Issued |
| 2019-02-18 | Original Complaint Filed |
| 2019-02-19 | Accused WeatherLogic System displayed at International Builders' Show |
| 2021-07-13 | Certificate of Correction issued for '588 Patent |
| 2021-07-20 | Certificate of Correction issued for '044 Patent |
| 2021-08-10 | Certificate of Correction issued for '713 Patent |
| 2021-09-01 | Accused WeatherLogic System used to build home in Des Moines, IA |
| 2022-01-04 | Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,474,197 - “Panel for Sheathing System and Method”
The Invention Explained
- Problem Addressed: Traditional building construction requires a multi-step process of installing structural panels (like plywood or OSB) and then separately applying a weather barrier layer, such as house wrap or felt paper, which is a labor-intensive process and can create slick, unsafe surfaces for workers (Compl. ¶¶ 20, 21; ’415 Patent, col. 1:44-59).
- The Patented Solution: The invention integrates the weather barrier directly onto the structural panel during manufacturing. The solution provides a structural panel with a pre-applied barrier layer that is both water-resistant (to shed rain) and water-vapor-permeable (to allow moisture to escape from inside the wall cavity), with joints between panels sealed by a water-resistant sealant like tape (’197 Patent, Abstract; col. 5:1-12). This simplifies the construction process into a single step (Compl. ¶21).
- Technical Importance: This integrated approach was designed to streamline the weatherization process for buildings, reducing labor costs and potential installation errors associated with separate house wrap applications (Compl. ¶21).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 and independent claim 12 (Compl. ¶¶ 31, 37).
- Claim 1 (System Claim):
- A panel system to externally envelope a structure.
- At least two adjacent lignocellulosic panels defining a joint.
- A barrier layer secured to each panel, being substantially bulk water resistant and substantially water vaporpermeable.
- A bulk water resistant edge sealant for sealing the joint.
- Claim 12 (Method Claim):
- A method of externally sheathing a building structure.
- Obtaining at least two panel assemblies, each with a lignocellulosic panel and a secured barrier layer that is substantially bulk water resistant and vapor permeable.
- Positioning the panels adjacent to each other to define a joint.
- Fastening each panel to the structure.
- Sealing the joint.
U.S. Patent No. 9,010,044 - “Panel for Sheathing System and Method”
The Invention Explained
- Problem Addressed: The ’044 Patent addresses the same general problem as the ’197 Patent: the inefficiency and potential for error in multi-step weatherization processes involving separate house wrap or felt paper layers (’044 Patent, col. 1:45-51).
- The Patented Solution: This patent claims a similar integrated panel system but adds a specific negative limitation: that the assembled system forms a sealed wall or roof "without applying a separate moisture barrier layer of house wrap or felt paper." It also explicitly claims the sealant as "strips of water-resistant tape having an adhesive layer and a backing" (’044 Patent, col. 22:43-63).
- Technical Importance: The invention's value proposition is the elimination of a separate weatherization step, which is captured by the negative limitation in the claim (’044 Patent, col. 22:60-63).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶49).
- Claim 1 (System Claim):
- A panel system to externally envelope a structure.
- At least two adjacent lignocellulosic panels with substantially parallel edges defining a joint.
- A barrier layer secured to each panel, being substantially bulk water resistant and water vaporpermeable.
- A bulk water resistant edge sealant comprising strips of water-resistant tape with an adhesive layer and a backing.
- Wherein the assembled system forms a sealed wall or roof without applying a separate moisture barrier layer of house wrap or felt paper.
U.S. Patent No. 9,382,713 - “Panel for Sheathing System and Method”
- Technology Synopsis: This patent builds on the prior inventions by adding requirements that the barrier layer has a "textured" outer surface and that the panel includes "alignment guides" for positioning the sealing tape. The textured surface is intended to improve skid resistance for workers (’713 Patent, col. 7:41-51).
- Asserted Claims: At least independent claim 1 (Compl. ¶68).
- Accused Features: The complaint alleges the WeatherLogic panels have a textured barrier layer, referencing a close-up photograph of the product. It also alleges the panels provide alignment guides for positioning tape (Compl. ¶¶ 70, 72). A photograph in the complaint shows the textured surface of the accused product's tape (Compl. p. 26).
U.S. Patent No. 9,546,479 - “Panel for Sheathing System and Method”
- Technology Synopsis: This patent claims a "panelized sheathing system for external walls" specifically comprising "structural wall panels." This appears to narrow the scope from the broader "lignocellulosic panels" to those explicitly designated for structural wall applications.
- Asserted Claims: At least independent claims 1 and 11 (Compl. ¶¶ 88, 95).
- Accused Features: The complaint alleges the WeatherLogic panels are "structural" and form an "external wall," citing Defendant's marketing literature describing the product as an "engineered wood structural panel" (Compl. ¶¶ 89, 90).
U.S. Patent No. 9,689,159 - “Panel for Sheathing System and Method”
- Technology Synopsis: This patent claims a panel system "capable of covering at least a portion of a building frame structure." The claims use broader language like "structural panels" without the "lignocellulosic" limitation of earlier patents.
- Asserted Claims: At least independent claim 1 (Compl. ¶106).
- Accused Features: The complaint alleges the WeatherLogic panels are structural and capable of covering a building frame, citing Defendant's marketing materials (Compl. ¶107).
U.S. Patent No. 9,695,588 - “Panel for Sheathing System and Method”
- Technology Synopsis: This patent claims a building structure comprising oriented strand board (OSB) panels fastened to a frame. A key technical feature is that the panel with its barrier layer has specific quantitative water vapor transmission or permeance rates as determined by standard ASTM tests.
- Asserted Claims: At least independent claim 10 of the pre-Certificate of Correction version and claims 1-4, 6-16, and 19-20 of the post-Certificate of Correction version (Compl. ¶¶ 123, 180).
- Accused Features: The complaint alleges the WeatherLogic panels are OSB and meet the claimed water vapor permeance range of "about 0.1 to about 12 perms," citing Defendant's technical literature stating the product has a "5.35 perm rating in ASTM E96 testing" (Compl. ¶¶ 124, 125, 135). The complaint includes a table from Defendant's materials showing this 5.35 perms rating (Compl. p. 41).
U.S. Patent No. 9,702,140 - “Panel for Sheathing System and Method”
- Technology Synopsis: This patent claims a "method for constructing a building structure" that involves the steps of fastening first and second structural panels (each with a barrier layer) to a frame and then applying a sealant to the joint.
- Asserted Claims: At least independent claim 1 (Compl. ¶143).
- Accused Features: The complaint alleges infringement based on the sale of the WeatherLogic system and its instructions, which direct users to fasten the panels to a frame and apply tape to the seams (Compl. ¶¶ 150-152).
U.S. Patent No. 10,072,415 - “Panel for Sheathing System and Method”
- Technology Synopsis: This patent claims a single "structural panel for use in a sealed-joint panel system." The claims recite specific geometric properties (e.g., four edges, parallel and perpendicular) and the same quantitative water vapor transmission/permeance rates as the '588 Patent.
- Asserted Claims: At least independent claim 8 (Compl. ¶160).
- Accused Features: The complaint alleges the WeatherLogic OSB panels have four edges with the claimed geometry and meet the claimed water vapor permeance rates, again citing Defendant's technical literature (Compl. ¶¶ 161, 163, 164).
III. The Accused Instrumentality
Product Identification
- The LP WeatherLogic Air & Water Barrier system ("WeatherLogic System"), which is composed of LP WeatherLogic panels and LP WeatherLogic Seam & Flashing Tape (Compl. ¶24).
Functionality and Market Context
- The WeatherLogic panels are described as structural wall panels made of engineered wood, specifically oriented strand board (OSB), with an integrated, bonded, weather-resistant overlay that serves as a water and air resistive barrier (Compl. ¶¶ 24, 89, 124). The overlay is also described as water vapor permeable (Compl. ¶27). The WeatherLogic tape is a pressure-sensitive acrylic tape used to seal the joints between panels to create a "continuous exterior air/water barrier" (Compl. ¶¶ 24, 34). The complaint alleges the system is intended to compete directly with Plaintiff's ZIP System Sheathing and that Defendant copied the system, "only changing the color of the LP product" (Compl. ¶¶ 25, 26). A side-by-side comparison photograph is provided in the complaint to illustrate the alleged similarity between Plaintiff's green-colored product and Defendant's blue-colored product (Compl. p. 8).
IV. Analysis of Infringement Allegations
U.S. Patent No. 8,474,197 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A panel system to externally envelope a structure... | The WeatherLogic System is marketed for use in "externally enveloping a structure and/or constructing a building structure." | ¶26 | col. 21:49-50 |
| at least two adjacent lignocellulosic panels... each panel alignedwith its at least one edge proximate to the at least one edge of the adjacent panel and defining a longitudinal joint between the two adjacent panels; | WeatherLogic panels are engineered wood (lignocellulosic) and are installed adjacent to one another, with instructions to space panel edges 1/8", creating a longitudinal joint. | ¶33, ¶40 | col. 21:51-57 |
| a barrier layer secured to the outer surface... of each panel, the barrier layer being substantially bulk water resistant and substantially water vaporpermeable; | The WeatherLogic panel has a "weather-resistant overlay permanently bonded to an LP engineered wood structural panel" that provides "air/water resistance plus vapor permeability." | ¶33 | col. 21:58-60 |
| a bulk water resistant edge sealant sealing the joint between the proximate edges of the two adjacent panels. | The WeatherLogic tape is a "pressure-sensitive acrylic-based tape specially formulated to create a powerful water-resistant air barrier for the structure" and is applied to the seams between panels. | ¶34 | col. 21:61-62 |
Identified Points of Contention
- Scope Questions: The primary dispute may center on the terms of degree, such as whether the accused product's barrier layer is "substantially" bulk water resistant and "substantially" water vapor permeable within the meaning of the claims. The parties may dispute whether the performance characteristics of the accused product meet these qualitative thresholds.
- Technical Questions: A factual question may arise regarding the material composition of the accused panels. While the complaint alleges they are "lignocellulosic as they are engineered wood" (Compl. ¶33), the precise definition of "lignocellulosic panel" could become a point of contention if the accused product's composition differs from the embodiments described in the patent.
U.S. Patent No. 9,010,044 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A panel system to externally envelope a structure... comprising: at least two adjacent lignocellulosic panels... wherein the edges of the adjacent panels are substantially parallel to each other; | The WeatherLogic System is used to externally envelope structures. The panels are lignocellulosic and installed adjacent to one another with parallel edges. | ¶50, ¶51, ¶59 | col. 22:43-52 |
| a barrier layer secured to the outer surface... being substantially bulk water resistant and substantially water vaporpermeable; | The panel has a bonded "weather-resistant overlay" that provides "air and water intrusion [prevention]... while also providing vapor permeability." | ¶51 | col. 22:53-55 |
| a bulk water resistant edge sealant sealing the joint... wherein the edge sealant includes strips of water-resistant tape having an adhesive layer and a backing, | The WeatherLogic tape is a "pressure-sensitive acrylic-based tape" used to seal seams, and on information and belief, has an adhesive layer and backing. | ¶52, ¶60 | col. 22:56-60 |
| wherein the assembled panel system forms a sealed wall or roof of the structure without applying a separate moisture barrier layer of house wrap or felt paper. | The complaint cites Defendant's marketing literature, which states the system "replac[es] standard wall sheathing and conventional wrapping methods," to allege it is used without a separate house wrap. | ¶53 | col. 22:60-63 |
Identified Points of Contention
- Scope Questions: The key point of contention for this patent will likely be the negative limitation: "without applying a separate moisture barrier layer of house wrap or felt paper." The defendant may argue that its product can be, or sometimes is, used with a separate house wrap, which would raise the question of whether the claim requires that the system must be used without a house wrap, or simply that it can be.
- Evidentiary Questions: The complaint alleges on "information and belief" that the tape has an adhesive layer and a backing (Compl. ¶52). While this is a common pleading standard, discovery will be required to confirm the physical construction of the accused tape meets this claim element.
V. Key Claim Terms for Construction
The Term: "substantially bulk water resistant and substantially water vaporpermeable" (’197 Patent, claim 1)
Context and Importance
- These terms of degree are central to the function of the invention. The infringement analysis will depend on whether the measured performance of the WeatherLogic System's barrier layer falls within the scope of "substantially." Practitioners may focus on these terms because they are not defined with quantitative limits in this patent, opening them to interpretation based on the specification and the understanding of a person of ordinary skill in the art.
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: The specification discusses the goal of preventing "penetration of bulk water" while allowing for the "escape of water vapor," framing the terms functionally rather than by a specific numeric threshold (’197 Patent, col. 1:53-56). This may support an interpretation that covers any product performing this dual function, regardless of its specific permeance rating.
- Evidence for a Narrower Interpretation: The specification provides specific quantitative performance data for preferred embodiments, such as a water vapor permeance from about 0.1 to 1.0 U.S. perms and a liquid water transmission rate from about 1 to 28 grams/100 in²/24 hrs (’197 Patent, col. 6:1-8). A defendant may argue these specific ranges inform, and thus narrow, the meaning of "substantially."
The Term: "without applying a separate moisture barrier layer of house wrap or felt paper" (’044 Patent, claim 1)
Context and Importance
- This negative limitation defines the invention's core value proposition: eliminating a construction step. The case may turn on whether selling or using the WeatherLogic System constitutes infringement if it does not explicitly prohibit—or is sometimes used in conjunction with—a separate house wrap.
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: The background section of the patent frames the invention as a solution to the problems of house wrap, describing it as "difficult and time-consuming to install" (’044 Patent, col. 1:56-62). This context may support a reading that the claimed system is one that renders house wrap unnecessary, regardless of whether a builder might choose to use it anyway.
- Evidence for a Narrower Interpretation: The claim language recites what the "assembled panel system forms." A defendant may argue that if a builder assembles the system with a separate house wrap, then the "assembled panel system" as used in the field does not meet this limitation, and thus there is no direct infringement for the defendant to induce. The complaint itself provides a photograph showing the accused product being used to sheath a house, which would be a key piece of evidence for how the system is "assembled" in practice (Compl. p. 10).
VI. Other Allegations
Indirect Infringement
- The complaint alleges both induced and contributory infringement for all asserted patents. Inducement is primarily based on Defendant’s marketing materials, installation instructions, and customer assistance, which allegedly "encourage, instruct, assist, and/or promote" customers to assemble the panels and tape in an infringing manner (e.g., Compl. ¶¶ 40-42, 45). Contributory infringement is based on allegations that the WeatherLogic System is not a staple article of commerce and has no substantial non-infringing use, as it is especially made to be used in the patented configuration (e.g., Compl. ¶43). A product installation diagram from Defendant's materials is provided as evidence of these instructions (Compl. p. 14).
Willful Infringement
- Willfulness is alleged for all patents. The basis is Defendant's alleged pre-suit knowledge of the patents due to industry awareness of Plaintiff's prior litigation against Georgia-Pacific, as well as actual notice provided by the filing of the original complaint in this action on February 18, 2019 (e.g., Compl. ¶¶ 36, 55).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of scope and function: For the earlier patents in the portfolio, can the qualitative term "substantially water vaporpermeable" be construed to read on a product with a specific, measured permeance rating of 5.35, or will the court narrow the term's meaning based on the patent's specific embodiments? For the later patents, the dispute will be a direct factual comparison of the accused product's tested performance characteristics against the explicit quantitative ranges recited in the claims.
- Another key question will be one of negative limitation: How will the court interpret the phrase "without applying a separate moisture barrier layer" from the ’044 Patent? The case may depend on whether this requires the accused product to be marketed and used exclusively without a separate house wrap, or whether it is sufficient that the product is merely capable of functioning as a standalone system, thereby replacing the need for a separate wrap.
- A third issue will be one of evidence and intent: Given the extensive allegations of copying, including side-by-side photographic comparisons, the court will likely examine the evidence supporting indirect and willful infringement. A key question will be whether Defendant's marketing and instructional materials provide sufficient evidence of an intent to induce customers to assemble the accused product in a manner that directly infringes the asserted method and system claims.