DCT
8:17-cv-02715
Acoustiblok Inc v. Sonic Shield LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Acoustiblok, Inc. (Florida) and L.J. Avalon, LLC (Florida)
- Defendant: Sonic-Shield, LLC (Florida), Philip J. Hipol (Florida), and Ryan P. Menendez (Florida)
- Plaintiff’s Counsel: Shumaker, Loop & Kendrick, LLP
- Case Identification: Acoustiblok, Inc. v. Sonic-Shield, LLC, 8:17-cv-02715, M.D. Fla., 01/11/2018
- Venue Allegations: Venue is alleged on the basis that all defendants are residents of or conduct business within the Middle District of Florida.
- Core Dispute: Plaintiffs allege that Defendants’ sound reducing panels infringe a patent on the same technology, and that this infringement is willful due to the individual defendants' prior affiliation with the plaintiff company.
- Technical Context: The technology at issue involves composite sound reducing panels designed for durability and performance in outdoor or hazardous environments.
- Key Procedural History: The complaint alleges that Defendant Philip J. Hipol is a former independent sales representative for Plaintiff Acoustiblok who, while still engaged with Acoustiblok, formed Defendant Sonic-Shield to manufacture and sell allegedly infringing copies of Acoustiblok's patented panels. These allegations of direct knowledge and copying form the basis for the willfulness claim.
Case Timeline
| Date | Event |
|---|---|
| 2002-06-12 | ’184 Patent Priority Date (Provisional Application) |
| 2003-06-11 | ’184 Patent Application Filing Date |
| 2006-06-20 | ’184 Patent Issue Date |
| 2014-08-29 | Defendant Hipol engaged by Plaintiff Acoustiblok |
| 2015-07-20 | Defendant Sonic-Shield, LLC formed |
| 2016-01-04 | Defendant Hipol terminates relationship with Acoustiblok |
| 2018-01-11 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,063,184 - "SOUND REDUCING PANEL" (Issued June 20, 2006)
The Invention Explained
- Problem Addressed: The patent identifies a need for sound-reducing panels that are simple, reliable, and efficient for use in outdoor or hostile environments, noting that many prior art solutions were specifically designed for indoor applications and not adaptable for outdoor use (’184 Patent, col. 5:26-30, 5:37-40).
- The Patented Solution: The invention is a composite panel designed for durability. It comprises a water-resistant sound-absorbing member, often made of fiber glass, which may be enclosed by a porous covering sheet. To block sound transmission, a water-resistant sound-blocking member, such as a sheet of mass-loaded vinyl, is secured to one side of the absorbing member (’184 Patent, Abstract; col. 6:42-48). The entire assembly is typically held by a support frame to provide rigidity and allow for mounting (’184 Patent, col. 6:13-16).
- Technical Importance: The panel's layered construction provides a method for both absorbing ambient sound and blocking its transmission in a single, weather-resistant unit suitable for outdoor installation (’184 Patent, col. 5:44-48).
Key Claims at a Glance
- The complaint asserts independent claims 4 and 5.
- Independent Claim 4:
- a water resistant sound absorbing member defined by a first and second face surface and a plurality of peripheral edges;
- a water resistant sound blocking member secured to said second face surface of said sound absorbing member for blocking the transmission of sound through the sound reducing panel;
- said water resistant sound blocking member comprising a sheet of polymeric material having a thickness of approximately one-eighth of an inch and having a weight equal to or greater than one pound per square foot;
- a porous covering sheet overlaying said sound absorbing member and said sound blocking member;
- a support frame located about said plurality of peripheral edges of said sound absorbing member and said sound blocking member; and
- a mounting for supporting the improved sound reducing panel.
- Independent Claim 5:
- a water resistant sound absorbing member defined by a first and second face surface and a plurality of peripheral edges;
- a water resistant sound blocking member secured to said second face surface of said sound absorbing member for blocking the transmission of sound through the sound reducing panel;
- said water resistant sound blocking member comprising a sheet of polymeric material having a weight equal to or greater than one pound per square foot;
- a porous covering sheet overlaying said sound absorbing member and said sound blocking member;
- a support frame located about said plurality of peripheral edges of said sound absorbing member and said sound blocking member; and
- a mounting for supporting the improved sound reducing panel.
III. The Accused Instrumentality
Product Identification
- The accused products are acoustical panels manufactured and sold by Sonic-Shield, LLC (Compl. ¶30, 47).
Functionality and Market Context
- The complaint alleges, based on an inspection of an accused panel, that the Sonic-Shield product is a composite sound-reducing panel (Compl. ¶35). The complaint includes a photograph showing a cutaway view of the accused panel, identifying a "sound absorbing member," a "sound blocking member," and a "metallic frame and sheet" (Compl. p. 7, Figure 1). The sound-blocking component is identified as a "Noise Barrier" made from mass-loaded vinyl, described as a "visco-elastic polymer that reduces the transmission of noise" (Compl. ¶39). The complaint alleges these panels are marketed through the Sonic-Shield website and other channels as infringing copies of Plaintiff's products (Compl. ¶1, 30).
IV. Analysis of Infringement Allegations
The complaint provides infringement allegations for claims 4 and 5, supported by annotated photographs from an inspection of an accused panel.
’184 Patent Infringement Allegations (Claim 4)
| Claim Element (from Independent Claim 4) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a water resistant sound absorbing member defined by a first and second face surface and a plurality of peripheral edges | The accused panels include a "water resistant sound absorbing member" with the specified surfaces and edges. A photograph demonstrates its water resistance. | ¶38(a); p. 7, Fig. 2 | col. 12:46-49 |
| a water resistant sound blocking member secured to the second face surface of said sound absorbing member... | The accused panels include a "water resistant sound blocking member" secured to the absorbing member. | ¶38(b); p. 7, Fig. 1 | col. 12:50-55 |
| ...comprising a sheet of polymeric material having a thickness of approximately one-eighth of an inch and having a weight equal to or greater than one pound per square foot | The sound blocking member is alleged to be a polymeric material weighing at least one pound per square foot and having a thickness of approximately one-eighth of an inch. Photographs depict the weighing and measurement of this component. | ¶39-41; p. 8, Fig. 3; p. 9, Fig. 4 | col. 12:56-61 |
| a porous covering sheet overlaying said sound absorbing member and said sound blocking member | The accused panels include a "porous covering sheet" overlaying the other members. | ¶42; p. 9, Fig. 5 | col. 14:1-3 |
| a support frame located about said plurality of peripheral edges... | The accused panels include a "support frame located about the peripheral edges" of the internal members. | ¶43(a); p. 10, Fig. 6 | col. 14:4-6 |
| a mounting for supporting the improved sound reducing panel | The accused panels include a "mounting" for support. | ¶43(b); p. 10, Fig. 6 | col. 14:7-9 |
’184 Patent Infringement Allegations (Claim 5)
| Claim Element (from Independent Claim 5) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a water resistant sound absorbing member defined by a first and second face surface and a plurality of peripheral edges | The accused panels include a "water resistant sound absorbing member" with the specified surfaces and edges. | ¶38(a); p. 7, Fig. 2 | col. 12:46-49 |
| a water resistant sound blocking member secured to the second face surface of said sound absorbing member... | The accused panels include a "water resistant sound blocking member" secured to the absorbing member. | ¶38(b); p. 7, Fig. 1 | col. 12:50-55 |
| ...comprising a sheet of polymeric material having a weight equal to or greater than one pound per square foot | The sound blocking member is alleged to be a polymeric material weighing at least one pound per square foot. A photograph depicts the weighing of this component. | ¶39-40; p. 8, Fig. 3 | col. 12:56-61 |
| a porous covering sheet overlaying said sound absorbing member and said sound blocking member | The accused panels include a "porous covering sheet" overlaying the other members. | ¶42; p. 9, Fig. 5 | col. 14:1-3 |
| a support frame located about said plurality of peripheral edges... | The accused panels include a "support frame located about the peripheral edges" of the internal members. | ¶43(a); p. 10, Fig. 6 | col. 14:4-6 |
| a mounting for supporting the improved sound reducing panel | The accused panels include a "mounting" for support. | ¶43(b); p. 10, Fig. 6 | col. 14:7-9 |
- Identified Points of Contention:
- Scope Questions: A central dispute for Claim 4 may involve the term "approximately one-eighth of an inch". The complaint provides a photograph purporting to show this measurement (Compl. p. 9, Figure 4). The litigation may focus on whether the accused product's actual thickness falls within the scope of "approximately" as construed by the court.
- Technical Questions: The complaint alleges the accused product's "Noise Barrier" is made of "mass loaded vinyl" (Compl. ¶39). While Claim 4 broadly recites a "sheet of polymeric material," the patent specification describes a preferred embodiment using "mineral filled vinyl polymeric material" (’184 Patent, col. 11:65-66). This raises the question of whether any material differences between the accused product and the patent's disclosure are relevant to the infringement analysis.
V. Key Claim Terms for Construction
The Term: "approximately one-eighth of an inch" (from Claim 4)
- Context and Importance: This quantitative limitation is present in Claim 4 but absent in Claim 5. Its construction is therefore dispositive for infringement of Claim 4. Practitioners may focus on this term because the plaintiff has provided photographic evidence of the measurement, making it a key factual predicate for infringement that the defendant will likely challenge.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The use of the word "approximately" itself suggests that the patentee did not intend to be limited to a precise value, allowing for some tolerance. The specification does not provide further definition, which may support giving the term its plain and ordinary meaning.
- Evidence for a Narrower Interpretation: The patent specification recites this exact phrase in describing the "water resistant sound blocking member" (’184 Patent, col. 12:1-2) but provides no specific range of deviation. A defendant could argue this lack of a specified range limits the term to a very narrow band around the stated value.
The Term: "support frame" (from Claims 4 and 5)
- Context and Importance: Both asserted claims require a "support frame located about said plurality of peripheral edges." The nature and location of this frame in the accused product will be compared to the claim language.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent discloses multiple embodiments of a support frame, including an "internal frame" formed by impregnating the edges of the absorbing material with a polymer (’184 Patent, col. 6:29-34) and an "external frame" comprising a "U-shape metallic member" (’184 Patent, col. 11:36-40). This disclosure of multiple distinct frame types could support a broad construction that is not limited to any single embodiment.
- Evidence for a Narrower Interpretation: A party could argue that the phrase "located about said plurality of peripheral edges" requires a specific physical relationship, potentially limiting the term to frames that fully encase or are integrated into the edges in a manner consistent with the disclosed embodiments.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement against the individual defendants, Hipol and Menendez (Compl. ¶53-62). The basis for this claim is the allegation that they are the "moving, active, conscious force" behind Sonic-Shield's infringement (Compl. ¶57). Knowledge is alleged based on their prior employment at Acoustiblok, their awareness of the patented product, and the patent marking on that product (Compl. ¶56).
- Willful Infringement: Willfulness is alleged based on pre-suit knowledge of the ’184 Patent. The complaint asserts that Defendant Hipol, an engineer, was a sales representative for Acoustiblok and was "acutely aware of the benefits and learned of the composition of the Acoustiblok Panel" (Compl. ¶23, 25). It is further alleged that Hipol formed the defendant company, Sonic-Shield, nearly six months before terminating his relationship with Acoustiblok, for the purpose of selling infringing copies (Compl. ¶29).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central factual question will be one of evidentiary proof: does the accused panel's sound-blocking layer have a thickness of "approximately one-eighth of an inch" as required by Claim 4? While the complaint offers photographic evidence, the case may turn on competing expert measurements and testimony regarding the specific dimensions of the accused product and the permissible range of the term "approximately."
- The case presents a significant question of culpability and damages: do the facts surrounding Defendant Hipol's prior relationship with Acoustiblok and the formation of Sonic-Shield rise to the level of willful infringement? The court's determination on this issue, which appears to be a focal point of the complaint, will be critical to the potential for enhanced damages.