DCT
2:21-cv-00802
Acufloor LLC v. Eventile Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Acufloor, LLC (Texas)
- Defendant: EvenTile, Inc. (Florida) and Forpac, LLC (Florida)
- Plaintiff’s Counsel: Haynes and Boone, LLP; Stearns Weaver Miller Weissler Alhadeff & Sitterson, P.A.
- Case Identification: 2:21-cv-00802, M.D. Fla., 10/29/2021
- Venue Allegations: Venue is asserted based on Defendants being incorporated in Florida, having registered agents for service of process, conducting regular business within the judicial district, and committing the alleged acts of patent infringement there.
- Core Dispute: Plaintiff alleges that Defendants’ tile leveling clip and wedge systems infringe four utility patents and two design patents related to devices for ensuring flat, even tile installations.
- Technical Context: The technology addresses "lippage," the height difference between adjacent, newly-installed tiles, which is a persistent problem for both professional and DIY installers, particularly with the market trend towards larger tiles.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendants with notice of the asserted patents via cease-and-desist letters beginning in March 2020. This was followed by more than a year of licensing negotiations which ultimately broke down in August 2021, two months prior to the filing of this suit. These allegations form the basis for the claim of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2013-04-09 | Earliest Priority Date for '857 and '274 Patents |
| 2017-03-02 | Filing Date for D'680 Design Patent |
| 2017-08-30 | Earliest Priority Date for '947 and '271 Patents |
| 2018-07-31 | Filing Date for D'527 Design Patent |
| 2018-11-06 | D'680 Design Patent Issued |
| 2019-12-10 | '947 Patent Issued |
| 2019-12-24 | '857 Patent Issued |
| 2019-12-24 | D'527 Design Patent Issued |
| 2020-03-26 | First Notice of Infringement to EvenTile |
| 2020-07-07 | '271 Patent Issued |
| 2020-07-07 | '274 Patent Issued |
| 2020-09-25 | Second Notice of Infringement to EvenTile |
| 2021-01-11 | Notice of Infringement to FORPAC |
| 2021-02-01 | Licensing Negotiations Allegedly Begin (approx.) |
| 2021-08-01 | Licensing Negotiations Allegedly Break Down (approx.) |
| 2021-10-29 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,501,947 - "Wedge Device For Leveling Tiles and Clip Set For Use of Same"
The Invention Explained
- Problem Addressed: The patent describes a need for an improved tool to help professional and DIY installers properly align and level tiles during installation, a process complicated by the trend toward larger tiles with smaller joints ('947 Patent, col. 1:21-34). Existing mechanical systems were allegedly inefficient and costly, often requiring three to four devices per tile intersection, which slowed down work and obscured the installer’s view of critical alignment points (Compl. ¶10; '947 Patent, col. 4:61-65).
- The Patented Solution: The invention is a wedge device designed to be inserted into a corresponding clip. The wedge’s core feature is a "line-of-sight opening" that extends longitudinally through its body ('947 Patent, Abstract). This opening allows the installer to maintain visual contact with the tile grout lines and corners directly underneath the tool, which is particularly important when leveling the intersection of three or four tiles with a single device ('947 Patent, col. 3:55-65; Fig. 4).
- Technical Importance: This design aims to make tile leveling faster and more accurate by combining the mechanical leveling function with the ability for an installer to see the alignment point, potentially reducing the number of leveling devices needed per job ('947 Patent, col. 4:10-19).
Key Claims at a Glance
- The complaint asserts independent claim 9 (Compl. ¶40).
- Essential elements of claim 9 include:
- A wedge device for a tile leveling device including a clip member, the wedge device comprising:
- a backstop member;
- a body having an attachment end, a penetrating edge, a top, and a bottom, with the penetrating edge being continuous across the entire width of the body;
- an inclined plane on the body, tapering from the attachment end to the penetrating edge;
- a longitudinal axis from the attachment end to the penetrating edge; and
- a line-of-sight opening extending along the longitudinal axis and intersecting a specific portion of the longitudinal length (from one-eighth from the attachment end to one-eighth from the penetrating edge), providing top-to-bottom visibility and sized to give a user visual contact with tiles.
- The complaint does not explicitly reserve the right to assert dependent claims, though this is common practice.
U.S. Patent No. 10,513,857 - "Device For Leveling and Aligning Tiles and Method for Leveling and Aligning Tiles"
The Invention Explained
- Problem Addressed: The patent addresses the same general need for a device that assists in accurately leveling and spacing tiles to avoid aesthetic and safety issues arising from improper installation ('857 Patent, col. 1:32-43).
- The Patented Solution: This invention focuses on the clip component of the system, referred to as the "leveling device." The solution centers on an "I-shaped base" that is orthogonally coupled to an upright body ('857 Patent, col. 5:47-48). This base has four distinct bars that extend transversely, creating notches designed to receive the corners of adjacent tiles ('857 Patent, col. 6:5-8). The body has an open window to receive a wedge and a frangible breakaway section that allows the upper part of the clip to be removed after the tile mortar has set ('857 Patent, col. 5:43-46, 6:1-4).
- Technical Importance: The I-shaped base structure is designed to provide stable, four-point contact for up to four tiles simultaneously using a single clip, while the notches ensure proper mortar contact underneath the tile corners for a solid bond ('857 Patent, col. 4:30-42).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶50).
- Essential elements of claim 1, a combination claim, include:
- A tile leveling device and tile combination comprising:
- A leveling device (the clip) which comprises: a body with an open window; an I-shaped base with four spaced bars extending transversely; and a frangible breakaway section.
- A first tile positioned over the first bar and a second tile positioned over the second bar, with specific requirements for their corners being in contact with mortar in a notch.
- The frangible breakaway section being located between the surfaces of the tiles.
- A wedge device that penetrates the open window and exerts force on the tiles.
U.S. Patent No. 10,704,271 - "Wedge Device For Leveling Tiles and Clip Set For Use of Same"
- Technology Synopsis: This patent, a continuation of the application that led to the ’947 Patent, also claims a wedge device for a tile leveling system. The central innovation is a "line-of-sight opening" that provides visibility through the wedge to the tile intersection below, addressing the problem of obstructed views with prior art devices. The claim language specifies different dimensional constraints for the opening compared to the '947 Patent ('271 Patent, Abstract; Compl. ¶74).
- Asserted Claims: At least independent claim 1 is asserted (Compl. ¶73).
- Accused Features: The "EvenTile System" wedge is accused of infringing this patent (Compl. ¶73, ¶75).
U.S. Patent No. 10,704,274 - "Device For Leveling and Aligning Tiles and Method for Leveling and Aligning Tiles"
- Technology Synopsis: This patent, which shares a priority claim with the '857 Patent, claims a tile leveling clip. The invention focuses on a base with specifically located notches designed to ensure a "majority of an area of tile-to-mortar-to-subfloor contact," solving the problem of inadequate mortar bonding at tile edges when using leveling systems ('274 Patent, Abstract; Compl. ¶84).
- Asserted Claims: At least independent claim 5 is asserted (Compl. ¶83).
- Accused Features: The clip components of both the "EvenTile System" and "FORPAC System" are accused of infringement (Compl. ¶83, ¶85).
U.S. Design Patent No. D832,680 - "Wedge for Tile Installation Device"
- Technology Synopsis: This patent protects the ornamental design of a tile installation wedge. The claimed design shows a tapered wedge with a serrated top surface and a rectangular, longitudinally-oriented opening through its body (D'680 Patent, Fig. 1).
- Asserted Claims: The single claim for the ornamental design as shown in the figures.
- Accused Features: The "Eventile Universal Wedges" are accused of infringing this design patent (Compl. ¶104).
U.S. Design Patent No. D870,527 - "Wedge for Tile Installation Device"
- Technology Synopsis: This patent protects another ornamental design for a tile installation wedge. The visual features are similar to the '680 Design Patent but show different proportions, including a wider body and a more elongated central opening (D'527 Patent, Fig. 1).
- Asserted Claims: The single claim for the ornamental design as shown in the figures.
- Accused Features: The "Eventile Universal Wedges" are accused of infringing this design patent (Compl. ¶112).
III. The Accused Instrumentality
Product Identification
The complaint names the "EvenTile System" and the "FORPAC System" as the accused instrumentalities (Compl. ¶¶ 22, 27). Both systems are described as consisting of leveling spacers (clips) and wedges (Compl. ¶¶ 22, 27).
Functionality and Market Context
The accused products are tile leveling systems used to create flat surfaces by preventing lippage between adjacent tiles during installation (Compl. ¶¶ 9, 22, 27). The complaint alleges that the accused systems are "direct knockoff[s]" of Plaintiff's "Acufloor System" and that the two companies are "direct competitors" in the market (Compl. ¶¶ 23-24, 28). The complaint further alleges that Defendant FORPAC purchases all or part of its system from Defendant EvenTile (Compl. ¶29). An image in the complaint shows the EvenTile wedge, the corresponding clip, and the two components assembled together (Compl. ¶22). A separate image shows the FORPAC-branded system, which includes a clip, a wedge, and an assembled view (Compl. ¶27).
IV. Analysis of Infringement Allegations
The complaint alleges that detailed infringement analyses are contained in exhibits not provided with the filing. The following analysis is based on the claim language and infringement allegations presented in the body of the complaint.
'947 Patent Infringement Allegations
| Claim Element (from Independent Claim 9) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a backstop member; | The accused EvenTile wedge includes a vertical backstop member at its rear. | ¶¶ 22, 42 | col. 2:65 |
| a body having an attachment end, a penetrating edge, a top, and a bottom... the penetrating edge being continuous the entire width of the body; | The accused wedge has an elongated body with a front penetrating edge and a rear attachment end coupled to the backstop. | ¶¶ 22, 42 | col. 2:65-3:2 |
| the body including an inclined plane tapering from the attachment end to the penetrating edge; | The top surface of the accused wedge is an inclined plane, tapering from the thicker backstop end to the thinner penetrating edge. | ¶¶ 22, 42 | col. 3:2-4 |
| a line-of-sight opening extending along the longitudinal axis... providing visibility through the body from the top to the bottom, the line-of-sight opening sized to provide a user of the wedge device visual contact with tiles during a leveling operation. | The accused wedge contains a central opening that extends through its body, which the complaint alleges meets the dimensional and functional requirements of the claim. | ¶¶ 22, 42 | col. 4:32-39 |
- Identified Points of Contention:
- Functional Questions: A primary question will be whether the opening in the accused EvenTile wedge is "sized to provide a user... visual contact with tiles during a leveling operation." This functional language may require evidence beyond simple product dimensions, focusing instead on how the device is used in practice and the extent of visibility it actually affords an installer at a tile intersection.
- Technical Questions: The claim recites a specific dimensional limitation for the opening, requiring it to intersect the longitudinal axis between the one-eighth marks from each end. The infringement analysis will depend on whether the physical measurements of the accused EvenTile wedge fall within this claimed range.
'857 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a leveling device comprising: a body defining an open window, | The accused clips (EvenTile and FORPAC) have an upright body with a window for the wedge to pass through. | ¶¶ 22, 27, 52 | col. 5:43-46 |
| an I-shaped base orthogonally coupled to the body, the I-shaped base having spaced first, second, third, and fourth bars extending transversely from the body... | The accused clips have a base that sits under the tiles, which the complaint alleges constitutes an "I-shaped base" with the required four bars. | ¶¶ 22, 27, 52 | col. 5:47-54 |
| an I-shaped base to body coupling including a frangible breakaway section... | The accused clips are designed with a weakened section at the base of the upright body to allow for removal after tile installation. | ¶¶ 22, 27, 52 | col. 6:1-4 |
| a first tile over the first bar... a second tile over the second bar... | This describes the intended use of the accused system, where adjacent tiles are placed over the bars of the clip's base. | ¶¶ 60, 93 | col. 4:1-15 |
| a wedge device comprising: a backstop member, and a wedge member... penetrating the open window and exerting force against both tiles... | The accused wedges are inserted into the accused clips to exert a leveling force on the tiles. | ¶¶ 22, 27, 52 | col. 6:9-12 |
- Identified Points of Contention:
- Scope Questions: The definition of "I-shaped base" will be critical. The court will have to determine if the accused clips' base structures meet this limitation, which the claim further defines as "having spaced first, second, third, and fourth bars." The visual evidence (Compl. ¶22, ¶27) shows the accused clips have a base, but whether it meets this specific structural definition will be a central point of dispute.
- Evidentiary Questions: Claim 1 is a combination claim that includes the tiles themselves and their interaction with mortar. Proving direct infringement requires showing that the accused system is used in a way that meets every element, including the "edge-to-subfloor contact of... corner-to-mortar-to-subfloor" limitation. This raises the question of whether evidence of typical customer use will satisfy these specific requirements.
V. Key Claim Terms for Construction
Term 1: "line-of-sight opening ... sized to provide ... visual contact with tiles" ('947 Patent, Claim 9)
- Context and Importance: This functional language is the central point of novelty for the wedge patents. The interpretation of what constitutes adequate "visual contact" will be pivotal to the infringement analysis. Practitioners may focus on this term because its functional nature makes it susceptible to arguments about the degree and quality of visibility required to meet the claim.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the opening as providing "visual contact VC through the body" generally, which could support an argument that any opening allowing a user to see through the wedge suffices ('947 Patent, col. 3:56-59).
- Evidence for a Narrower Interpretation: The patent background criticizes prior art for obscuring tile "intersections" ('947 Patent, col. 4:61-65). This may support a narrower construction requiring the opening to be large enough to view the corner where multiple tiles meet, not just any part of a single tile. The figures consistently show a large, unobstructed opening (e.g., '947 Patent, Fig. 8).
Term 2: "I-shaped base" ('857 Patent, Claim 1)
- Context and Importance: This structural limitation defines the core of the asserted clip invention. Whether the accused clips' bases fall within the scope of this term is a dispositive question for infringement of the '857 Patent.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not provide a standalone textual definition of "I-shaped base," which might allow for an argument that any base with a central spine and transverse elements falls within its plain and ordinary meaning.
- Evidence for a Narrower Interpretation: The claim itself further defines the term by requiring "spaced first, second, third, and fourth bars extending transversely from the body." An embodiment is detailed in Figure 11A, showing a specific four-bar structure. A defendant may argue that the term is limited by this explicit language and the corresponding embodiment, excluding structures that do not have four distinct bars arranged in this manner.
VI. Other Allegations
Indirect Infringement
The complaint alleges both induced and contributory infringement for the '857 and '274 patents. The inducement theory is based on allegations that Defendants provide "product information and instruction materials," including online videos and web pages, that actively instruct customers to use the accused systems in a manner that directly infringes the patents (Compl. ¶¶ 60, 93, p.18 fn.1). The contributory infringement theory alleges the system components are "especially made and adapted" for infringement and are not staple articles of commerce with substantial non-infringing uses (Compl. ¶¶ 67, 98).
Willful Infringement
The complaint alleges that Defendants' infringement has been and continues to be willful, knowing, and intentional (Compl. ¶36). This allegation is supported by claims of pre-suit notice via cease-and-desist letters dating back to March 2020 and subsequent, lengthy licensing negotiations that failed before the suit was filed (Compl. ¶¶ 33-35).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of structural scope: does the base of the accused leveling clips meet the specific "I-shaped base" limitation recited in the '857 patent, which requires four distinct bars? The court's construction of this term, in light of the patent's figures and descriptive language, will be critical to the infringement finding for the clip-related patents.
- A second key question will involve functional interpretation: is the opening in the accused wedge "sized to provide a user... visual contact with tiles" as functionally claimed in the '947 patent? Resolving this will likely require evidence of how the product is used in the field and whether it provides the specific visibility needed to overcome the problems described in the patent.
- Finally, given the detailed allegations of pre-suit notice and failed licensing negotiations, a significant question for trial will be one of intent: if infringement is found, was it willful? The answer could expose Defendants to the risk of enhanced damages under 35 U.S.C. § 284.