DCT
0:12-cv-60215
Flexiteek Americas Inc v. Plasteak Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Flexiteek Americas, Inc. (Florida) and Flexiteek International AS (Norway)
- Defendant: PlasTEAK, Inc. (Ohio) and PlasDECK, Inc. (Ohio)
- Plaintiff’s Counsel: Santucci Priore, P.L.
- Case Identification: 0:12-cv-60215, S.D. Fla., 02/06/2012
- Venue Allegations: Venue is based on allegations that Defendants have sold, offered for sale, used, or installed infringing products within the Southern District of Florida.
- Core Dispute: Plaintiff alleges that Defendants’ synthetic marine decking product infringes a reexamined patent related to shape-conforming surface coverings.
- Technical Context: The technology concerns flexible, synthetic decking materials designed to imitate the appearance of traditional teak wood decking on marine vessels, while offering improved durability and ease of installation on curved surfaces.
- Key Procedural History: This case follows a prior litigation between the same parties over the original version of the patent-in-suit (the '881 Patent). In that case, a jury found Defendants' products literally infringed the patent's sole claim (Claim 1). Following the verdict, Defendants initiated an ex parte reexamination at the USPTO, which resulted in the cancellation of original Claim 1 and the issuance of new, narrower claims 2-29. This new complaint asserts these reexamined claims against what are alleged to be identical or equivalent products.
Case Timeline
| Date | Event |
|---|---|
| 1999-06-24 | '881 Patent Priority Date |
| 2005-05-24 | '881 Patent Issued |
| 2009-06-19 | Jury verdict of infringement in prior case (No. 08-60996) |
| 2009-07-03 | Final Judgment entered in prior case |
| 2009-08-26 | Defendants requested reexamination of '881 Patent |
| 2009-11-03 | USPTO granted request for reexamination |
| 2010-02-05 | Permanent Injunction entered in prior case |
| 2010-07-20 | Court stayed Final Judgment and terminated Injunction pending reexamination |
| 2011-07-27 | USPTO Board of Patent Appeals and Interferences invalidated original Claim 1 |
| 2011-12-06 | USPTO issued Certificate of Reexamination for '881 Patent, allowing new Claims 2-29 |
| 2012-01-06 | Defendants filed Motion for Relief from Judgment in prior case |
| 2012-02-06 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,895,881 - Shape Conforming Surface Covering
- Patent Identification: U.S. Patent No. 6,895,881, issued May 24, 2005. The complaint asserts the claims of the Reexamined '881 Patent, for which a certificate was issued on December 6, 2011 (Compl. ¶¶ 23, 35; Exh. E).
The Invention Explained
- Problem Addressed: The patent addresses the shortcomings of traditional wooden decking, particularly for marine applications. Such decking is described as impractical, having a short lifespan, and requiring significant maintenance like scrubbing and oiling. Furthermore, installing wooden planks on curved surfaces requires considerable stressing and fixing with screws, and the "new look" is lost within weeks ('881 Patent, col. 2:35-50).
- The Patented Solution: The invention is a surface covering made from flexible plastic strips or planks that can be laid in curved formations, especially with the application of heat ('881 Patent, col. 2:58-64). The underside of the planks features recesses or slots that facilitate bending and provide a surface for adhesive, eliminating the need for screws ('881 Patent, col. 3:26-30, Fig. 6). The top surface is roughened, for instance by sanding, to imitate the grain and non-slip texture of wood ('881 Patent, col. 4:45-55).
- Technical Importance: The invention provides a waterproof, stain-resistant, and low-maintenance alternative to traditional wood that can be easily conformed to the curved decks of yachts and other vessels ('881 Patent, col. 2:41-49).
Key Claims at a Glance
- The complaint asserts infringement of reexamined claims 2-29 (Compl. ¶35). The new independent claims are 9, 12, 15, 18, 22, and 27. Claim 9 is representative:
- Independent Claim 9:
- A shape conforming surface covering useful for covering any type of surfaces
- comprising planks or sheet of flexible material adapted to be interconnected
- which can be laid in curved formations
- and which at the upper surface is roughened to imitate any unique grain effect of wooden material
- wherein the planks or sheet are formed with longitudinal slots at the underside for facilitating forming of curved coverings and for acting as a base for adhesive
- wherein the planks or sheet are capable of being laid in tightly curved formations only with adhesive, and without use of additional fasteners
- and wherein the planks or sheet are co-extruded with a respective intermediate caulking strip to form an integral unit.
- The complaint reserves the right to assert all dependent claims (Compl. ¶35).
III. The Accused Instrumentality
Product Identification
- The accused products are sold under the name "PlasDECK" (Compl. ¶5).
Functionality and Market Context
- The complaint describes PlasDECK as a "composite material resembling teak wood that is used for decking material of marine vessels" (Compl. ¶5). It is presented as a "composite alternative to teak wood decking" that can be applied to surfaces like fiberglass, steel, and wood (Compl. ¶12).
- The complaint alleges the currently accused products are "identical or equivalent to those which have already been adjudicated to infringe upon the '881 Patent" in a prior case (Compl. ¶29). In the prior case, Defendants reportedly admitted that their products are installed in the same way as Plaintiffs' products (Compl. ¶26). No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint does not provide a formal claim chart. The following table summarizes the infringement theory for representative independent claim 9, based on the complaint's narrative allegations.
'881 Patent Infringement Allegations
| Claim Element (from Independent Claim 9) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A shape conforming surface covering... comprising planks or sheet of flexible material... | The accused "PlasDECK" product is a "composite material resembling teak wood that is used for decking material of marine vessels." | ¶5 | col. 6:11-13 |
| which can be laid in curved formations... | The accused product is an alternative to teak decking that can be applied to almost any surface, including those on marine vessels which often have curved forms. | ¶12 | col. 6:15-17 |
| which at the upper surface of the covering is roughened so as to imitate any unique grain effect of wooden material... | The product is described as "resembling teak wood." | ¶5 | col. 6:17-18 |
| the planks or sheet are formed with longitudinal slots at the underside thereof for facilitating forming of curved coverings and for acting as a base for a glue or adhesive material... | The currently accused products are alleged to be identical or equivalent to products previously found to infringe, which were enjoined based on their use of "longitudinal slots... on the underside." | ¶¶17, 29 | col. 6:19-22 |
| wherein the planks or sheet are capable of being laid in tightly curved formations only with adhesive, and without use of additional fasteners... | Dependent claim 2, which contains this limitation, is alleged to describe the Accused Products. Defendants also admitted their products are installed in the same manner as Plaintiffs' products, which are installed with adhesive. | ¶¶26, 27 | col. 10:28-32 (Reexam. Cert.) |
| wherein the planks or sheet are co-extruded with a respective intermediate caulking strip to form an integral unit. | The complaint makes a general allegation that the Accused Products are described by "each of the newly-issued Claims 2-29," which includes this limitation. | ¶27 | col. 10:33-35 (Reexam. Cert.) |
- Identified Points of Contention:
- Scope Questions: A central question will be whether the accused "PlasDECK" product, as currently configured, meets the added limitations of the new reexamined claims, such as being "co-extruded with a respective intermediate caulking strip to form an integral unit" (Claim 9). The complaint does not provide specific factual allegations detailing the structure of the current PlasDECK product to substantiate this element.
- Technical Questions: What evidence does the complaint provide that the surface of the accused product is "roughened so as to imitate any unique grain effect of wooden material"? The complaint's allegation rests on the general description that the product "resembl[es] teak wood" (Compl. ¶5), which may become a point of dispute regarding the specificity required by the claim.
V. Key Claim Terms for Construction
The Term: "roughened so as to imitate any unique grain effect of wooden material" (Claim 9)
Context and Importance: This term defines the required surface appearance of the claimed invention. The dispute may turn on how closely the accused product's surface must "imitate" a "unique grain effect" of natural wood. Practitioners may focus on this term because the patent describes specific manufacturing steps, like sanding at an angle, to achieve this effect, which may narrow its scope.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states the goal is to provide a "surface effect which is extremely similar to that of grained wood both in texture and appearance" ('881 Patent, col. 2:35-37), which could support an interpretation covering any surface that looks and feels generally like wood.
- Evidence for a Narrower Interpretation: The patent details specific methods for creating the effect, such as using a belt sander at a 45° angle or an abrasive rotary tool, to "produce the unique grain effect" ('881 Patent, col. 4:45-55, col. 5:1-3). A defendant could argue this implies a specific type of manufactured grain, not just a generic wood-like texture.
The Term: "longitudinal slots at the underside" (Claim 9)
Context and Importance: This structural feature is critical for both function (facilitating curves, acting as a base for glue) and was a key issue in the prior litigation and injunction (Compl. ¶17). Its presence and function in the currently accused product will be a primary factual question.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language broadly recites the dual purpose of the slots: "for facilitating forming of curved coverings and for acting as a base for a glue or adhesive material" ('881 Patent, col. 6:19-22). This suggests any slot on the underside performing these functions could fall within the claim.
- Evidence for a Narrower Interpretation: Figure 6 of the patent shows several distinct profiles of recesses/slots ('881 Patent, Fig. 6). A party could argue that the term should be limited to structures resembling those specific disclosed embodiments, rather than any possible groove on the underside.
VI. Other Allegations
- Indirect Infringement: The complaint alleges Defendants induced infringement by making and selling the Accused Products with the intention that others (e.g., installers, end-users) will use them in an infringing manner (Compl. ¶61). It also alleges contributory infringement by providing the products with the intention that they be installed by others (Compl. ¶62).
- Willful Infringement: The willfulness allegation is based on the extensive history between the parties. The complaint alleges that Defendants had pre-suit knowledge of the patent and their infringement because of the prior lawsuit which resulted in a jury verdict of literal infringement and a final judgment (Compl. ¶¶ 13, 14, 57). The complaint further alleges that Defendants continue to infringe with "identical or equivalent" products even after the patent's claims were confirmed in reexamination, and points to Defendants' own website statements about the patent as evidence of ongoing, willful conduct (Compl. ¶¶ 29, 37, 38).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central legal question will be one of issue preclusion: to what extent does the prior jury verdict of infringement on the now-cancelled Claim 1 prevent Defendants from re-litigating the presence of the common elements shared by the new, reexamined claims? The case may explore how the addition of new limitations in reexamined claims affects the preclusive effect of a prior judgment.
- A key evidentiary question will be one of factual identity and scope: does the current "PlasDECK" product contain the specific, additional limitations recited in the new independent claims, such as being "co-extruded with... a caulking strip" (Claim 9) or having specific color differences (Claim 12)? The complaint's assertion that the products are "identical or equivalent" to the previously adjudicated ones will require factual proof against the specific language of the new claims.
- Finally, the case will present a significant question of willfulness: given the detailed litigation history, including a prior verdict and the subsequent reexamination that confirmed the patentability of the subject matter, can the Defendants establish a good-faith belief of non-infringement or invalidity for their continued sales?