DCT

1:10-cv-21826

Hunter Douglas Inc v. Shanghai Top Euro Textile Co Ltd

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:10-cv-21826, S.D. Fla., 06/04/2010
  • Venue Allegations: Plaintiff alleges venue is proper in the Southern District of Florida because Defendants have committed tortious acts within the district by exporting infringing products to customers in Florida and because a substantial part of the alleged unlawful acts occurred there.
  • Core Dispute: Plaintiff alleges that Defendants’ fabric window covering products infringe six of its U.S. patents related to the construction, design, and fabrication of light control window shades.
  • Technical Context: The technology concerns fabric window coverings, similar to Venetian blinds, that use two sheer fabric sheets connected by a series of horizontal, S-shaped vanes that can be tilted to control light.
  • Key Procedural History: Plaintiff states that since 1991, it has sold products incorporating the patented inventions under its SILHOUETTE® trademark. No other significant procedural history is mentioned in the complaint.

Case Timeline

Date Event
1990-10-24 Earliest Priority Date for all Asserted Patents
1991-01-01 Plaintiff begins selling SILHOUETTE® products
1994-05-24 ’999 Patent Issued
1995-03-07 ’922 Patent Issued
2000-09-05 ’797 Patent Issued
2002-04-30 ’196 Design Patent Issued
2004-02-10 ’369 Patent Issued
2006-06-13 ’378 Patent Issued
2010-06-04 Complaint Filing Date

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

U.S. Patent No. 5,313,999 - Fabric Light Control Window Covering

The Invention Explained

  • Problem Addressed: The patent describes a market need for fabric window coverings that offer the soft appearance of a shade but with the light-control functionality of a traditional Venetian blind (U.S. Patent No. 5,313,999, col. 2:44-51). Prior art attempts using heat-welding were limited to thermoplastic materials, produced uneven-looking seams, and were too slow for high-volume production (’999 Patent, col. 2:1-16). Additionally, using the same sheer fabric for front and back panels could create an undesirable visual "moire effect" (’999 Patent, col. 2:35-42).
  • The Patented Solution: The invention is a window covering constructed from two parallel sheets of sheer fabric connected by a plurality of opaque or semi-opaque fabric vanes. These vanes are attached using adhesive bonding rather than heat-welding, which allows for a "neat and uniform construction" and a high degree of manufacturing control (’999 Patent, col. 2:60-67). The patent also discloses a novel heat-setting process to ensure the final product remains uniform and wrinkle-free, and a method for avoiding the moire effect by using front and back sheer fabrics with different characteristics (’999 Patent, col. 3:11-18; col. 14:23-50).
  • Technical Importance: This adhesive-based construction method enabled the mass production of a window covering that combined the aesthetic benefits of fabric with the functional light control of blinds, overcoming key manufacturing and visual artifact problems present in prior art designs (’999 Patent, col. 2:52-60).

Key Claims at a Glance

  • The complaint does not specify which claims are asserted. Claim 1 is a representative independent claim.
  • Key elements of independent claim 1 include:
    • A first and second sheet of relatively translucent material disposed parallel to each other.
    • A plurality of relatively opaque strips (vanes) with edge portions bonded to the first and second sheets.
    • The vanes are movable between a closed position (substantially parallel to the sheets) and an open position (substantially transverse to the sheets).
    • The first and second sheets are sheer fabrics where the interstices (the spaces between threads) of one sheet are of a different size, shape, or orientation than the other to avoid a moire effect.
  • The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 5,394,922 - Fabric Light Control Window Covering

The Invention Explained

  • Problem Addressed: This patent builds on the technology of the ’999 patent, seeking to further improve the manufacturing process and aesthetics. A key problem addressed is the potential for the adhesive lines to "shine" when viewed through the sheer fabric, detracting from the appearance (’922 Patent, col. 10:1-4). The patent also addresses the need to control the stiffness of the vanes for proper form and function (’922 Patent, col. 6:26-34).
  • The Patented Solution: The invention discloses a bonding method where at least one of the sheer fabric sheets is porous. The adhesive penetrates this porous sheet to "encapsulate the fibers" and create a bond on the opposite side, which can then be treated to create a dull, non-shiny appearance (’922 Patent, Abstract; col. 11:5-12). The patent also discloses a method for creating stiffer vanes by tensioning fabric strips lengthwise while applying a bonding composition, resulting in a vane that is stiffer in its longitudinal direction than its cross direction (’922 Patent, col. 8:32-44).
  • Technical Importance: The invention provided a more refined aesthetic by solving the problem of visible, shiny glue lines, and it improved the mechanical performance of the vanes by introducing a method to control their directional stiffness (’922 Patent, col. 2:55-64).

Key Claims at a Glance

  • The complaint does not specify which claims are asserted. Claim 1 is a representative independent claim.
  • Key elements of independent claim 1 include:
    • A first sheet and a second sheet of material, with at least one sheet being porous.
    • A plurality of strips of material (vanes).
    • Adhesive bonding means for bonding the strips to the sheets.
    • The adhesive bonding means "encapsulating the porous sheet of material and subsequently being treated to dull the appearance" to remove shine.
  • The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 6,112,797 - Apparatus for Fabricating a Light Control Window Covering

  • Technology Synopsis: This patent claims an apparatus for manufacturing the window coverings described in related patents. The claimed apparatus includes systems for linear adhesive application and a heat-setting process using belts pressed over hot and cool surfaces, which is designed to produce a uniform, wrinkle-free product at high volume (Compl. ¶10-11; ’797 Patent, Abstract).
  • Asserted Claims: The complaint does not specify which claims are asserted (Compl. ¶45).
  • Accused Features: The complaint alleges that the "Accused Window Coverings" incorporate the inventions claimed in the ’797 patent, suggesting the products are made by an infringing process or apparatus (Compl. ¶44).

U.S. Patent No. 6,688,369 - Fabric Light Control Window Covering

  • Technology Synopsis: This patent is directed to the product itself, focusing on the specific fabric characteristics used to prevent the moire effect. It claims a window covering where the front and back sheer fabrics have different appearances, achieved by using materials with different interstice sizes, shapes, or orientations (Compl. ¶11; ’369 Patent, Abstract).
  • Asserted Claims: The complaint does not specify which claims are asserted (Compl. ¶55).
  • Accused Features: The complaint alleges the Accused Window Coverings possess the claimed structure, including features to prevent the moire effect (Compl. ¶11, ¶54).

U.S. Patent No. 7,059,378 - Fabric Light Control Window Covering

  • Technology Synopsis: This patent also claims the window covering product with features to avoid the moire effect. It discloses that the required difference in appearance between the two sheer fabric sheets can be achieved by using various combinations of woven, non-woven, or transparent plastic materials (Compl. ¶11; ’378 Patent, Abstract).
  • Asserted Claims: The complaint does not specify which claims are asserted (Compl. ¶65).
  • Accused Features: The complaint alleges the Accused Window Coverings are constructed with the features claimed in the patent (Compl. ¶11, ¶64).

U.S. Design Patent No. D456,196 - Fabric Light Control Window Covering

  • Technology Synopsis: This design patent claims the ornamental appearance of the fabric light control window covering. The figures illustrate the distinctive visual look of the product, characterized by the series of gracefully curved, S-shaped vanes suspended between two sheer fabric planes (Compl. ¶15; ’196 Patent, Fig. 1).
  • Asserted Claims: The single claim of the design patent is asserted (Compl. ¶75).
  • Accused Features: The complaint alleges that the overall ornamental appearance of the Accused Window Coverings is substantially the same as the design claimed in the patent (Compl. ¶74).

III. The Accused Instrumentality

Product Identification

  • The accused products are window coverings sold under the name "100% Polyester Sophie Blind Fabric" and/or model numbers 8001, 80010, 8001B, 8011, 80110, 80130, 8013B, 8016, 80160, 80180, and 8018B (Compl. ¶18).

Functionality and Market Context

  • The complaint alleges these products are fabric light control window coverings that incorporate the patented technology (Compl. ¶17). This includes a structure with two planes of translucent fabric separated by multiple opaque or semi-opaque, horizontally extending, S-shaped vanes (Compl. ¶11). The complaint further alleges that the vanes move between open and closed positions as the fabric planes are moved relative to one another and that the products are designed to prevent the moire effect (Compl. ¶11). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint alleges infringement in general terms without providing a claim chart or detailed element-by-element analysis. The following summary is based on the allegations in the complaint and the elements of representative independent claim 1 of the ’999 Patent.

5,313,999 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A window covering comprising a first sheet of relatively translucent material, a second sheet of relatively translucent material disposed parallel to said first sheet... The Accused Window Coverings include two planes of translucent fabric. ¶11, ¶24 col. 18:8-11
...and a plurality of relatively opaque strips of material, each strip having edge portions bonded to said first sheet and said second sheet, respectively... The Accused Window Coverings have multiple opaque or semi-opaque S-shaped vanes extending between and attached to the translucent fabric planes. ¶11, ¶24 col. 18:11-14
...whereby central portions of said strips form vanes which, in a first closed position...are substantially planar and extend substantially parallel to the first and second sheets...and, in a second open position...extend generally transverse to said first and second sheets... The vanes of the Accused Window Coverings move between an open and a closed position when the fabric planes are raised and lowered. ¶11, ¶24 col. 18:14-21
...wherein said first and second sheets are each sheer fabrics...the interstices of one sheet being of a different size and/or shape and/or of a different orientation from those of the other sheet... The Accused Window Coverings are constructed such that one plane of translucent fabric is different from the other to prevent the moire effect. ¶11, ¶24 col. 18:22-29

5,394,922 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A light control window covering comprising a first sheet of material, a second sheet of material...at least one of said sheets being porous... The Accused Window Coverings are constructed of fabric sheets. ¶11, ¶34 col. 19:12-14
...a plurality of strips of material each having opposed faces and opposed edge portions...adhesive bonding means for bonding said strips along opposed edge portions to said sheets of material... The Accused Window Coverings have vanes that are adhesively bonded to the fabric sheets. ¶11, ¶34 col. 19:14-19
...said adhesive bonding means encapsulating the porous sheet of material and subsequently being treated to dull the appearance of the adhesive bonding means to remove any shine... The complaint does not provide sufficient detail for analysis of this element. ¶34 col. 19:19-22
  • Identified Points of Contention:
    • Technical Questions: A primary factual question will be whether the Accused Window Coverings are actually constructed as alleged. Specifically, do they use two different sheer fabrics for the front and back planes to mitigate the moire effect, as required by key claims in the ’999, ’369, and ’378 patents? Further, does the bonding method used for the accused products meet the specific "encapsulating" and "dulling" limitations of the ’922 patent?
    • Scope Questions: The infringement allegation against the ’797 apparatus patent raises a question of scope and proof. The dispute may turn on whether Plaintiff can demonstrate that the Accused Window Coverings were manufactured using an apparatus that practices the claimed methods, which may require discovery into Defendants' manufacturing facilities and processes.

V. Key Claim Terms for Construction

  • The Term: "moire effect"

  • Context and Importance: This term is central to the infringement theory for several asserted patents. The complaint alleges that preventing this visual artifact is a key feature of the patented inventions and the accused products. The definition of what constitutes a "moire effect" and what structural differences between fabrics are sufficient to "avoid" it will be critical.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The specification of the parent ’999 patent describes the term broadly as an "undesirable feature" or "interference pattern which would result when light is viewed through the folded over fabric" (’999 Patent, col. 2:35-42).
    • Evidence for a Narrower Interpretation: The claims of the ’999 and ’369 patents may be argued to implicitly define the term by reciting a specific solution for avoiding it, namely that the "interstices of one sheet being of a different size and/or shape and/or of a different orientation from those of the other sheet" (’999 Patent, Claim 1).

  • The Term: "adhesively bonded"

  • Context and Importance: This term distinguishes the claimed inventions from prior art that used "heat-welding." The scope of what constitutes "adhesive bonding" will be fundamental to the infringement analysis for most of the asserted patents. Practitioners may focus on this term because the patents' detailed descriptions of specific hot-melt adhesives and heat-setting processes could be used to argue for a narrower construction than the plain meaning might suggest.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The ’999 patent specification notes that while it describes a hot-melt adhesive in detail, "it should be readily appreciated that the same principles are generally applicable to other types of liquid adhesives" (’999 Patent, col. 6:21-24).
    • Evidence for a Narrower Interpretation: A defendant might argue that the term should be limited by the detailed embodiments, which describe a specific copolyester hot-melt adhesive and a novel heat-setting process involving specific temperatures and equipment (’999 Patent, col. 6:58-65; col. 10:20-33).

VI. Other Allegations

  • Indirect Infringement: The complaint alleges active inducement of infringement under 35 U.S.C. § 271(b) (Compl. ¶26, ¶36, ¶46, ¶56, ¶66, ¶76). The basis for this allegation is that Defendants, with specific intent, induced others, including a specific distributor named Loman Distributors, Inc., to infringe. The complaint does not specify the particular acts of inducement, such as providing instructions or marketing materials.
  • Willful Infringement: The complaint alleges that Defendants' acts have been "committed intentionally and willfully, with knowledge of Hunter Douglas' rights" in the asserted patents (Compl. ¶27, ¶37, ¶47, ¶57, ¶67, ¶77). The complaint does not allege any specific facts to support pre-suit knowledge, such as prior correspondence or litigation.

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

  • A central issue will be one of technical implementation: Do the accused "100% Polyester Sophie Blind Fabric" products actually incorporate the claimed moire-effect-prevention technology by using front and back sheer fabrics with measurably different structural characteristics, as required by claims of multiple asserted patents?
  • A key evidentiary question will be one of process versus product: For the apparatus claims of the ’797 patent, can the Plaintiff produce evidence that the accused products were manufactured using a process that meets the specific steps and configurations of the claimed apparatus, an inquiry that may depend heavily on discovery into foreign manufacturing operations?
  • A third core issue will be one of scienter: As the case progresses, what evidence will emerge to substantiate the boilerplate allegations of willfulness and inducement, particularly regarding the Defendants' knowledge of the asserted patents and any specific intent to cause infringement within the United States?