Boral Stone Products LLC v. Glen Gery Corp

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Boral Stone Products LLC (Delaware)
  • Defendant: Glen-Gery Corporation (Delaware)
  • Plaintiff’s Counsel: Richards, Layton & Finger, P.A.; Alston & Bird LLP
• Case Identification: 1:19-cv-00690, D. Del., 04/16/2019
• Venue Allegations: Venue is alleged to be proper in the District of Delaware because the Defendant is a Delaware corporation and therefore resides in the judicial district.
• Core Dispute: Plaintiff alleges that Defendant’s StoneFit line of cast stone veneer wall panels infringes two patents related to prefabricated wall panels that feature integrated mounting hardware and interlocking tongue-and-groove designs.
• Technical Context: The technology pertains to the building materials industry, specifically panelized stone veneer systems that replicate the appearance of traditional masonry while aiming to provide easier installation, improved durability, and integrated water management.
• Key Procedural History: The complaint does not mention any prior litigation, inter partes review proceedings, or licensing history related to the patents-in-suit. The asserted U.S. Patent No. 9,903,124 is a continuation of a divisional of the application that matured into the asserted U.S. Patent No. 8,782,988, indicating a shared technical disclosure and prosecution lineage.

Case Timeline

Date	Event
2008-02-06	Earliest Priority Date for '988 Patent and '124 Patent
2014-07-22	U.S. Patent No. 8,782,988 Issued
2017-05-01	Glen-Gery introduced its StoneFit branded line of wall panels (approximate)
2018-02-27	U.S. Patent No. 9,903,124 Issued
2019-04-16	Complaint Filed

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

U.S. Patent No. 9,903,124 - "Prefabricated Wall Panel with Tongue and Groove Construction"

• Patent Identification: U.S. Patent No. 9,903,124, "Prefabricated Wall Panel with Tongue and Groove Construction," issued February 27, 2018.

The Invention Explained

• Problem Addressed: The patent describes a need to improve prefabricated cast veneer wall panels, which can be susceptible to damage during handling and shipping. It also notes a desire for features that simplify installation compared to traditional masonry. (ʼ124 Patent, col. 1:43-52).
• The Patented Solution: The invention is a prefabricated wall panel composed of a precast body with a decorative face and an integrated mounting element. A portion of the mounting element is embedded in the precast body for structural integrity, while another portion projects outward to serve as a fastening flange. A key feature is a groove formed between the panel body and the projecting flange, which is designed to interlock with an adjacent panel. The mounting element also includes "weep holes" to allow water that enters the assembly to drain away. (ʼ124 Patent, Abstract; col. 2:4-12).
• Technical Importance: This design seeks to combine structural anchoring, panel-to-panel alignment, and water management into a single, integrated product, thereby streamlining the construction process for veneer wall systems. (ʼ124 Patent, col. 1:49-52).

Key Claims at a Glance

• The complaint asserts claims 1–5 (Compl. ¶19). Independent claim 1, as corrected by a Certificate of Correction, contains the following key elements:
  • A wall panel comprising: a body comprising at least one design element;
  • a mounting element comprising a first segment embedded within an interior portion of the body and a second segment projecting to an exterior of the body; and
  • a groove formed between a portion of the body and the second segment of the mounting element, the groove being inset relative to a first edge of the body and the mounting element comprises weep holes configured to allow water to drain from the groove.
• The complaint reserves the right to assert dependent claims 2-5. (Compl. ¶19).

U.S. Patent No. 8,782,988 - "Prefabricated Wall Panel with Tongue and Groove Construction"

• Patent Identification: U.S. Patent No. 8,782,988, "Prefabricated Wall Panel with Tongue and Groove Construction," issued July 22, 2014.

The Invention Explained

• Problem Addressed: The patent identifies a need for a quick and efficient method of creating a masonry appearance on buildings that simplifies construction and lowers costs relative to traditional techniques. (ʼ988 Patent, col. 1:15-20).
• The Patented Solution: The invention is a prefabricated wall panel having a precast body and an embedded mounting element. The panel is defined by a tongue-and-groove system that facilitates installation. A "groove" is formed along a first edge of the panel between the precast body and the mounting element. A corresponding "tongue" is formed along the opposite edge of the precast body itself. This configuration allows panels to be "vertically stacked and interconnected," ensuring proper alignment and support during installation. (ʼ988 Patent, Abstract; col. 2:59-66).
• Technical Importance: By integrating a self-aligning tongue and groove directly into the panel structure, the invention aims to improve the speed, accuracy, and reliability of veneer wall installation over systems that require manual alignment of each panel. (ʼ988 Patent, col. 5:40-54).

Key Claims at a Glance

• The complaint asserts claims 1, 11, 13-16, 18, 20-23, 25, and 29-31. (Compl. ¶20). Independent claim 1 contains the following key elements:
  • A prefabricated wall panel, comprising: a body integrally formed from a single piece of material, said body including at least one decorative design element;
  • a mounting element including a first segment embedded substantially within an interior portion of said body and a second segment projecting to an exterior of said body;
  • a groove formed between a portion of said body and said second segment of said mounting element, said groove being inset relative to a first edge of said body; and
  • a tongue portion of said body, said tongue portion being defined by a second edge of said body opposite said first edge, wherein said tongue portion is sized and shaped to be received in said groove so that said prefabricated wall panels may be interconnected to form a wall defining a substantially flush rear surface.
• The complaint reserves the right to assert numerous dependent claims. (Compl. ¶20).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are Defendant Glen-Gery’s "StoneFit branded line of cast stone veneer wall panels" (Compl. ¶18).

Functionality and Market Context

The StoneFit panels are alleged to be cast stone products that "imitate the appearance and texture of real stone" (Compl. ¶18). The complaint states that the products incorporate "DryFit" Technology® to "facilitate and manage water drainage" (Compl. p. 5). The complaint provides photographs of the front and rear of a StoneFit panel, showing a decorative stone-like face and a rear side with integrated mounting hardware. (Compl. p. 5). Plaintiff alleges that Glen-Gery competes directly with it in the market for stone veneer wall paneling (Compl. ¶17).

IV. Analysis of Infringement Allegations

The complaint references exemplary claim charts in Exhibits E and F, which were not filed with the complaint. The analysis below is based on the narrative allegations in the complaint body.

• ’124 Patent Infringement Allegations
  The complaint alleges that Glen-Gery's StoneFit panels "embody each and every limitation of claims 1–5" of the ’124 Patent (Compl. ¶19, 24). The infringement theory suggests that the accused panels contain a main body with a decorative design, an integrated mounting element with one part embedded in the panel and another part projecting out for fastening, and a groove between the body and the mounting element. A central aspect of the alleged infringement appears to be the panel's "DryFit" Technology," which Plaintiff contends satisfies the "weep holes configured to allow water to drain from the groove" limitation of claim 1. (Compl. p. 5; '124 Patent, cl. 1).

• ’988 Patent Infringement Allegations
  The complaint alleges that the StoneFit panels embody limitations of numerous claims of the ’988 Patent, including independent claim 1 (Compl. ¶20, 30). The infringement theory posits that the accused panels have a body made from a single piece of material, an embedded mounting element, and an interlocking system. This system is alleged to comprise a "groove" on one edge and a corresponding "tongue portion" on the opposite edge, purportedly formed by the panel "body" itself. This structure allegedly allows the panels to be interconnected to form a wall with a "substantially flush rear surface," as recited in claim 1. (Compl. ¶20; '988 Patent, cl. 1).

• Identified Points of Contention:

  • Technical Question: A factual dispute may arise regarding whether the accused panel's "DryFit Technology" functions in the same way as the "weep holes" claimed in the '124 Patent. The complaint does not provide technical details on how the "DryFit Technology" operates.
  • Scope Question: The infringement analysis for the ’988 Patent will raise the question of whether the interlocking feature on the accused StoneFit panel is a "tongue portion of said body" as required by claim 1, or if it is a feature of the separate mounting element. The resolution may depend on how the term "body" is construed.
  • Evidentiary Question: Claim 1 of the ’988 Patent requires a "body integrally formed from a single piece of material." The provided photograph of the accused product appears to show a composite article made of a cast material and a metallic mounting element, which may raise the question of whether these components constitute a "single piece of material." (Compl. p. 5).

V. Key Claim Terms for Construction

• Term from '124 Patent: "weep holes"

  • Context and Importance: This term is critical because infringement of claim 1 depends on whether the accused "DryFit Technology" is structurally and functionally equivalent to the claimed "weep holes". Practitioners may focus on this term to determine if any drainage feature suffices or if a more specific structure is required by the patent.
  • Intrinsic Evidence for a Broader Interpretation: The specification states that the "weep holes 25" "allow water to drain from the groove 36," which could support an interpretation where the term covers any feature performing that function. ('124 Patent, col. 6:8-10).
  • Intrinsic Evidence for a Narrower Interpretation: The patent figures depict "weep holes 25" as distinct, spaced apertures located in the mounting element (16) adjacent to the transition section (22), suggesting a specific physical structure rather than just a general drainage capability. ('124 Patent, Fig. 4A).

• Term from '988 Patent: "tongue portion of said body"

  • Context and Importance: This term defines a key part of the claimed interlocking system. The dispute will likely center on whether the tongue feature of the accused panel is part of the cast "body" or part of the mounting hardware, as the claim requires it to be a "tongue portion of said body."
  • Intrinsic Evidence for a Broader Interpretation: The claim language requires the tongue to be "defined by a second edge of said body," which a party might argue is broad enough to cover a shape formed by the overall profile of the body's edge, regardless of its precise material composition at that edge. ('988 Patent, col. 8:15-17).
  • Intrinsic Evidence for a Narrower Interpretation: The specification explicitly states that the "tongue 40 is formed by the second or bottom edge of the precast body 12." ('988 Patent, col. 5:42-43). The patent's figures, such as Figure 2, depict the tongue (40) as an extension of the cast material itself, distinct from the embedded mounting element, which could support a narrower construction.

VI. Other Allegations

• Indirect Infringement: The complaint does not plead separate counts for indirect infringement (inducement or contributory infringement) and does not allege specific facts to support the element of intent, such as identifying specific instructions or marketing materials that would encourage infringing use.
• Willful Infringement: The complaint alleges that the Defendant has had knowledge of both the '124 Patent and the '988 Patent "since at least as early as the filing of this Complaint" (Compl. ¶¶21, 22). This allegation forms the basis for a claim of post-suit willful infringement and requests for enhanced damages under 35 U.S.C. § 284 and a declaration that the case is "exceptional" to warrant attorneys' fees under § 285. (Compl. ¶¶28, 34).

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

• A core issue will be one of structural interpretation: does the physical construction of the accused StoneFit panel meet the specific limitations of the claims? This will involve factual determinations, such as whether its "DryFit Technology" is the same as the claimed "weep holes" and whether its interlocking feature is a "tongue portion of said body" or a part of the mounting hardware.
• The outcome will likely depend on claim construction: the court’s interpretation of key terms like "weep holes" and "tongue portion of said body" will be dispositive. Whether the court adopts broader functional definitions or narrower definitions tied to the specific structures disclosed in the patent embodiments will frame the entire infringement analysis.
• A key evidentiary question will be one of material composition: does the accused product's construction as a cast component with an embedded metal flange meet the '988 Patent's requirement that the "body" be "integrally formed from a single piece of material"?