DCT
2:21-cv-02014
FrenchPorte LLC v. Chi Overhead Doors Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: FrenchPorte, LLC, FrenchPorte IP, LLC (Maryland)
- Defendant: C.H.I. Overhead Doors, Inc. (Illinois)
- Plaintiff’s Counsel: Moarbes, LLP
- Case Identification: 2:21-cv-02014, C.D. Ill., 02/26/2021
- Venue Allegations: Venue is asserted based on the defendant residing within the district, transacting business in the state, and selling the allegedly infringing products in the state through a network of authorized dealers.
- Core Dispute: Plaintiff alleges that the manufacturing process for Defendant’s "Accents Woodtones" garage doors infringes a patent related to printing images onto warped door sections using negative pressure.
- Technical Context: The technology addresses the manufacturing of aesthetically customized overhead garage doors by enabling high-resolution digital images to be printed directly onto metal door panels.
- Key Procedural History: The complaint alleges that the parties engaged in unsuccessful licensing negotiations beginning in 2012, while the patent was pending. It further alleges that an attorney acting on Defendant's behalf filed a third-party submission with the PTO in 2010 in an attempt to prevent the patent from issuing, which delayed issuance by six years. Plaintiff also notes prior successful litigation against other parties on related patents.
Case Timeline
| Date | Event |
|---|---|
| 2009-02-27 | '558 Patent Priority Date |
| 2009-09-16 | '558 Patent Application Filed |
| 2010-08-18 | Alleged Third-Party Submission to PTO by Defendant's agent |
| 2012-XX-XX | Licensing Negotiations Allegedly Begin Between Parties |
| 2016-03-01 | '558 Patent Issued |
| 2021-02-26 | First Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,272,558 - "DOOR MANUFACTURING SYSTEM AND METHOD"
The Invention Explained
- Problem Addressed: The patent's background describes conventional garage doors as aesthetically unpleasing, labor-intensive to manufacture, and having seams that detract from the appearance and allow moisture to penetrate (’558 Patent, col. 1:20-43). The complaint adds that garage door sections are often warped, making it difficult to achieve good print quality (Compl. ¶19).
- The Patented Solution: The invention is a method for manufacturing doors by printing digital images, segmented to match door panels, directly onto the panels (’558 Patent, Abstract). To solve the problem of printing on imperfect surfaces, the method teaches applying "negative pressure" (a vacuum) to hold a "warped portion" of a door section flat against a support during printing, ensuring the surface is "uniformly spaced" from the print heads (’558 Patent, col. 6:46-58, col. 12:35-39). The complaint presents an image of a decorative garage door operating on standard tracks, illustrating the type of product enabled by the technology (Compl. p. 3, Ex. C).
- Technical Importance: This process enables the cost-effective mass customization of garage doors with high-resolution graphics, solving the practical challenge of printing on large, inherently non-flat industrial products (Compl. ¶¶15, 19-20).
Key Claims at a Glance
- The complaint asserts independent claim 10 (Compl. ¶¶27-35).
- The essential elements of independent claim 10 are:
- A method of manufacturing a door;
- Electronically receiving data for a digital image;
- Dividing the image into parallel segments;
- Printing the segment images onto corresponding metal door sections;
- Applying negative pressure to a warped portion of at least one door section to hold it flat on a support, such that the surface is uniformly spaced from the support during printing;
- Grouping the door sections to form a door with the appearance of the digital image.
- The complaint notes that infringement is alleged for "any one of its claims, such as claim 10" (Compl. ¶23).
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are Defendant C.H.I. Overhead Doors, Inc.’s "Accents Woodtones" garage doors and the process by which they are manufactured (Compl. ¶¶5, 28).
Functionality and Market Context
The complaint alleges that the accused doors are manufactured using a process that prints digital images, such as a wood grain, onto the doors (Compl. ¶30). It is alleged that this manufacturing process practices all steps of the asserted patent claim (Compl. ¶¶29-34). The complaint further alleges that the Accents Woodtones doors are a commercial success, estimating sales of 100,000 units per year (Compl. ¶25).
IV. Analysis of Infringement Allegations
'558 Patent Infringement Allegations
| Claim Element (from Independent Claim 10) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| electronically receiving data representative of a selection of a first digital image | C.H.I. receives data for digital images, such as a wooden garage door image, to print onto its Accents Woodtones doors. | ¶30 | col. 12:28-30 |
| dividing the first digital image into a number of parallel segments to form multiple segment images | C.H.I. allegedly divides the overall image because its garage doors consist of multiple sections, each printed with a fractional part of the complete image. | ¶31 | col. 12:30-31 |
| printing each of the segment images with ink on a surface of each of a plurality of metal door sections corresponding to said parallel segments | C.H.I. allegedly engages in printing segment images onto its door sections. This allegation is supported by the Hörmann Declaration. | ¶32 | col. 12:32-34 |
| applying negative pressure on at least one...door section having a warped portion, said negative pressure sufficient to secure and hold said warped portion of the section flat on a support... | C.H.I.’s manufacturing process is alleged to use this step. The allegation is based on the opinion of an expert, Mr. Christoph Hörmann. | ¶33 | col. 12:35-39 |
| grouping the door sections so as to create, when assembled, a door having an appearance of the first digital image | C.H.I. is alleged to engage in grouping the printed sections to assemble the final door. | ¶34 | col. 12:40-42 |
Identified Points of Contention
- Technical Questions: A primary factual dispute may concern the "applying negative pressure" limitation. The complaint's allegation relies entirely on an expert declaration that is referenced but not attached (Compl. ¶¶24, 33). This raises the question of what evidence Plaintiff will produce to demonstrate that Defendant's process actually uses a vacuum to flatten warped sections, as opposed to another method for handling surface irregularities, such as the variable-height print heads mentioned as a non-infringing alternative in the complaint (Compl. ¶22).
- Scope Questions: The analysis may raise questions about the scope of the term "warped portion." The court may need to determine whether the term, as used in the patent, refers to any deviation from perfect flatness inherent in manufactured door panels or requires a more significant, material deformation that the accused process is specifically designed to correct.
V. Key Claim Terms for Construction
- The Term: "warped portion"
- Context and Importance: This term appears central to the patent's asserted novelty over prior art and is the basis for the most specific technical infringement allegation (Compl. ¶¶20, 33). Practitioners may focus on this term because its definition will determine whether the inherent, minor surface imperfections of a typical garage door panel fall within the claim scope, or if a more substantial "warp" must be present and corrected by the accused process.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not explicitly define "warped," which may support giving it a broad, ordinary meaning. The complaint's factual background suggests that garage doors are inherently "warped and thus it is very difficult to obtain a good print quality," implying the term could cover typical, as-manufactured non-flatness (Compl. ¶19).
- Evidence for a Narrower Interpretation: The claim requires applying negative pressure "sufficient to secure and hold said warped portion... flat" (’558 Patent, col. 12:35-37). This language could suggest a warp significant enough to require active flattening, not just holding in place. The specification distinguishes the invention from prior art that used vacuums to hold substrates, suggesting the "flattening" function is key (’558 Patent, col. 6:46-58).
VI. Other Allegations
- Willful Infringement: The complaint does not contain an explicit count for willful infringement. However, it alleges facts that may support such a claim. It alleges Defendant had pre-suit knowledge of the invention and pending patent application through licensing discussions that began in 2012 (Compl. ¶¶16-17). It further alleges that Defendant, through an agent, submitted prior art to the PTO in 2010 in an effort to "undermine FrenchPorte's patent claims" (Compl. ¶18). Finally, it alleges Defendant continued to infringe after the patent issued in 2016 despite Plaintiff's further attempts to negotiate a license (Compl. ¶22).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of evidentiary proof: What evidence will be presented to substantiate the allegation, currently based on an unattached expert declaration, that Defendant’s manufacturing process uses negative pressure specifically to flatten warped door sections, rather than a non-infringing alternative for managing surface variations?
- The case may also turn on a question of definitional scope: Will the claim term "warped portion" be construed broadly to cover the ordinary, minor surface imperfections of a standard garage door panel, or will it be limited to a more significant structural deformation that requires the specific corrective flattening action described in the patent?