Vilox Ab v. Mohawk Industries Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Vilox AB (Sweden)
  • Defendant: Mohawk Industries Inc (Delaware); Menard Inc (Delaware)
  • Plaintiff’s Counsel: Shaw Keller LLP
• Case Identification: 1:24-cv-01430, D. Del., 01/28/2025
• Venue Allegations: Venue is alleged to be proper in the District of Delaware because both Mohawk Industries, Inc. and Menard, Inc. are incorporated in Delaware.
• Core Dispute: Plaintiff alleges that Defendants’ luxury vinyl plank flooring products, which incorporate a "fold-down" locking system, infringe a patent related to a releasable joining system for floor panels.
• Technical Context: The technology concerns glueless, mechanical locking systems for flooring panels, which allow for quick installation by folding or snapping panels together rather than using adhesives or traditional tongue-and-groove methods.
• Key Procedural History: The complaint alleges that Defendant Menard Inc received actual notice of the patent-in-suit and the specific infringement allegations on January 3, 2025, a fact which may be used to support the claim for willful infringement against Menard.

Case Timeline

Date	Event
2019-12-13	’717 Patent Priority Date (Swedish Application)
2020-07-23	Unilin Technologies posts YouTube video explaining Unidrop® system
2024-12-31	U.S. Patent No. 12,180,717 Issued
2025-01-03	Menard allegedly receives actual notice of the ’717 Patent
2025-01-28	First Amended Complaint for Patent Infringement filed

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

U.S. Patent No. 12,180,717 - "RELEASABLE JOINING SYSTEM FOR FLOOR PANELS"

The Invention Explained

• Problem Addressed: The patent describes a need for a fold-down joining system for floor panels that is simple and cost-effective to manufacture across a wide variety of materials (e.g., laminate, LVT, wood) without requiring separate resilient inserts. A key problem with prior one-piece systems was the difficulty of disassembling or releasing the panels once locked without causing damage ('717 Patent, col. 1:40-65).
• The Patented Solution: The invention is a two-panel joining system where the key innovation resides in a specially designed, resilient female coupling tongue on the first panel. This female tongue has a locking protrusion and a "lower recess" that allows it to deflect downward when a rigid male tongue from a second panel is pressed into it during a "fold-down" installation. Once the male tongue is seated, the female tongue snaps back, creating a horizontal lock. The system is explicitly designed to be releasable, either by inserting a tool into a "coupling release channel" to depress the female tongue or by pivoting one panel relative to the other ('717 Patent, col. 2:36-53; Fig. 1A).
• Technical Importance: This design claims to provide a robust, one-piece, snap-lock joining system that is both easy to install and, critically, easy to de-install, making it suitable for a broad range of flooring materials and for DIY applications ('717 Patent, col.8:50-57).

Key Claims at a Glance

• The complaint asserts independent claim 1 ('717 Patent, Compl. ¶21).
• Essential elements of independent claim 1 include:
  • A fold-down joining system with a female coupling on a first panel and a male coupling on a second.
  • The female coupling comprises a resilient tongue with a recess and a locking protrusion.
  • The male coupling is formed in one piece with the second panel and has a vertical locking means.
  • The female tongue further comprises a lower recess that enables the locking protrusion to be depressed during joining.
  • The system is configured for release by one of two alternative means: (1) using a coupling release tool or (2) by pivoting the second floor panel relative to the first.
  • The system further comprises one of several alternative structural features or dimensional relationships, including a "coupling release channel", an "inclined abutment surface", a specific recess length, or a specific protrusion length ratio.
• The complaint does not explicitly reserve the right to assert dependent claims.

III. The Accused Instrumentality

Product Identification

• The Accused Products include, without limitation, "Mohawk Home Expressions" luxury vinyl plank flooring and other similar products manufactured by Mohawk Industries Inc and sold by Menard that use "fold-down locking technology" (Compl. ¶¶ 23, 26).

Functionality and Market Context

• The complaint alleges the Accused Products utilize the "Unidrop®" click-locking system, which is licensed by Unilin BV, a wholly-owned subsidiary of Mohawk (Compl. ¶¶ 27, 29). Marketing materials for Unidrop®, cited in the complaint, describe it as "the first one-piece fold-down that solves the problem of deinstallation" by allowing a panel to be detached "by simply angling up one panel" (Compl. ¶27). This functionality is alleged to correspond to the patented invention's features for releasability. An image from the Unidrop® website shows the installation process, described as vertically pushing one plank into another (Compl. p. 6).

IV. Analysis of Infringement Allegations

’717 Patent Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
...a fold-down female coupling formed in one piece with a first floor panel and a fold-down male coupling formed in a second floor panel...	The accused product's locking system is comprised of integral male and female couplings formed on opposite edges of the floor panels. An annotated cross-section photo shows these components (Compl. p. 9).	¶36	col. 21:56-60
...the fold-down female coupling further comprises an upper guiding surface being located on a side of the female coupling recess on the first floor panel forming a guide for the male coupling tongue upon insertion thereof...	The female coupling has a surface that allegedly guides the male tongue during insertion, limiting its horizontal movement. This is illustrated with an annotated photo of the female profile (Compl. p. 12).	¶42	col. 22:4-13
...wherein the female coupling tongue is resilient and comprises a distally arranged locking protrusion...and being arranged to be received in a groove in the second floor panel for horizontal locking...	The female tongue is alleged to be resilient and has a locking protrusion that fits into a groove on the male panel to create a horizontal lock. A close-up annotated photo points to this protrusion (Compl. p. 13).	¶46	col. 22:61 - col. 23:2
...wherein the female coupling tongue further comprising a lower recess, enabling the locking protrusion of the female coupling tongue to be depressed during joining of the panels...	The female tongue includes a "lower recess" which allegedly allows the tip of the tongue to pivot downward during installation. An annotated photo highlights this recess (Compl. p. 15).	¶50	col. 23:3-7
...the fold-down joining system being configured for release by...pivoting the second floor panel in relation to the first floor panel...	The Accused Products use the "Unidrop®" system, which is marketed as solving "the problem of deinstallation" by "angling up one panel." This is alleged to meet the "pivoting" release limitation.	¶53-54	col. 23:8-11
...wherein the male coupling tongue has a protrusion length, measured from a bottom surface of the male coupling tongue to the upper surface of the groove in the second floor panel, of between 10% to 40% of a thickness of the second floor panel.	The complaint includes a photograph with measurement overlays, alleging the panel thickness is 88 units and the protrusion length is 23 units, for a ratio of approximately 26%, which falls within the claimed range (Compl. p. 19).	¶60	col. 23:32-37

Identified Points of Contention

• Technical Questions: A primary factual dispute may center on whether the female tongue of the Accused Product is truly "resilient" and whether the male tongue is rigid, as contemplated by the patent. The complaint's photographic evidence, while detailed, is static; the dynamic behavior of the components during locking and unlocking will be a key evidentiary issue.
• Scope Questions: Claim 1 includes several "or" clauses, presenting alternative ways to meet the final limitations. The complaint alleges infringement under multiple alternatives (e.g., alleging both a "coupling release channel" and an "inclined abutment surface" exist (Compl. ¶¶ 57-58)). The defense may argue that the Accused Product does not meet any of the specific alternatives, or that the Plaintiff's interpretation of those alternatives is overly broad. The construction of "pivoting" for release will be critical, specifically whether the "angling up" motion of the Unidrop® system functions in the manner described and claimed in the patent.

V. Key Claim Terms for Construction

The Term: "resilient" (as in "the female coupling tongue is resilient")

• Context and Importance: This term is fundamental to the invention's core mechanism, distinguishing the flexible female tongue from the presumably rigid male tongue. The infringement analysis depends on whether the accused female tongue exhibits the type and degree of flexibility required to perform the claimed function of depressing and snapping back.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The patent does not provide a specific material or numerical range for resiliency. It describes the function: the tongue deflects to "accommodate the male coupling tongue" and then "elastically return[s]" ('717 Patent, col. 10:65-col. 11:2). This functional description could support a broader definition covering any material that performs this action.
  • Evidence for a Narrower Interpretation: The patent repeatedly emphasizes that the female tongue is resilient to allow for a simpler, rigid male tongue, contrasting with prior art ('717 Patent, col. 4:41-42, col. 13:19-22). The specific geometry, including the "lower recess" (33), is described as what "allows the female coupling tongue 32, which is resilient, to temporarily deflect" ('717 Patent, col. 10:9-12). A defendant might argue that "resilient" must be construed in the context of this specific structure, which enables the resilience.

The Term: "configured for release by...pivoting the second floor panel"

• Context and Importance: This is one of the alternative ways to meet the "release" limitation and is directly tied to the complaint's allegations regarding the "Unidrop®" system's deinstallation feature. Whether the accused "angling up" action constitutes "pivoting" as claimed will be a decisive issue.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The patent presents "pivoting" as an alternative to using a release tool, suggesting it is a manual action that disengages the lock ('717 Patent, col. 4:32-38). The specification states the system "can thus be released...by pivoting," without imposing strict geometric constraints on the motion.
  • Evidence for a Narrower Interpretation: The specification explains that a "clearance surface" (46a) on the male tongue "facilitates that the second panel 20 can be released from the first panel 10 by pivoting," as it "pushes the female coupling tongue 32 downwards" ('717 Patent, col. 18:45-52; Fig. 19). A party could argue that "pivoting" must be limited to a mechanism that operates in this specific way, by causing a downward deflection of the female tongue via a clearance surface.

VI. Other Allegations

Willful Infringement

• The complaint alleges that Defendant Menard's infringement is willful. The basis for this allegation is Menard's alleged receipt of "actual notice on January 3, 2025 of the '717 Patent, along with specific allegations of infringement" (Compl. ¶63). This allegation appears to be based on post-suit (or at least post-initial-complaint) knowledge.

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

• A core issue will be one of structural and functional correspondence: Do the specific geometry, material properties, and operational mechanics of the accused "Unidrop®" system map onto the limitations of claim 1? The analysis will depend heavily on evidence demonstrating how the accused product's female tongue flexes during installation and how the "angling up" deinstallation method compares to the "pivoting" release described in the patent.
• The case will also turn on a question of claim scope and interpretation, particularly regarding the alternative limitations in the claim's final clauses. A key question for the court will be whether the accused product satisfies at least one of the disjunctive "or" conditions for release mechanisms and structural configurations, and whether the plaintiff's interpretation of terms like "resilient" and "pivoting" is supported by the patent's intrinsic evidence.