DCT
1:20-cv-01833
Illinois Tool Works Inc v. Chicago LAMINATING Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Illinois Tool Works Inc. (Delaware)
- Defendant: Chicago LAMINATING, Inc. (Illinois)
- Plaintiff’s Counsel: Lewis Brisbois Bisgaard & Smith, LLP
- Case Identification: 1:20-cv-01833, N.D. Ill., 03/17/2020
- Venue Allegations: Venue is alleged to be proper as Defendant maintains its principal place of business in the Northern District of Illinois and has committed alleged acts of infringement there.
- Core Dispute: Plaintiff alleges that Defendant’s process for manufacturing laminated sheets infringes a patent related to a sheet-fed lamination method for creating secure cards.
- Technical Context: The technology concerns the industrial manufacturing of laminated sheets used for products like transaction cards, ID cards, and licenses, where durability and the embedding of security features are critical.
- Key Procedural History: The complaint does not mention any prior litigation, Inter Partes Review (IPR) proceedings, or licensing history related to the patent-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 2004-05-21 | ’266 Patent Priority Date |
| 2009-06-09 | U.S. Patent No. 7,544,266 Issues |
| 2020-03-17 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Patent No. 7,544,266, "Process of Making Laminated Sheet and Product Made by the Process," issued June 9, 2009.
- The Invention Explained:
- Problem Addressed: The patent’s background section describes issues with prior art "roll-to-roll" lamination processes used for making card stock. These methods could lead to defects such as "roll set curl" (a memory of being wound in a coil), rippled edges, and visual imperfections from heavy adhesive coats, complicating the production of high-quality, flat laminated cards (’266 Patent, col. 2:17-34).
- The Patented Solution: The invention claims a process that avoids these issues by laminating a feature-bearing film directly onto "generally flat sheets" of a core substrate, rather than processing a continuous roll of the substrate (’266 Patent, col. 2:36-44). As depicted in Figure 1, individual sheets (4) are fed from a stack to a lamination nip to be combined with a film (1), a method intended to produce flatter, higher-quality laminated stock with fewer defects (’266 Patent, col. 4:4-10; Fig. 1).
- Technical Importance: This sheet-fed lamination approach provided a method to produce laminated card stock that could better meet the strict physical standards for transaction and identification cards by minimizing warping and curling (’266 Patent, col. 2:45-52).
- Key Claims at a Glance:
- The complaint asserts infringement of at least independent Claim 1 (Compl. ¶12).
- The essential elements of Claim 1, as recited in the complaint, include:
- Continuously feeding a supply of generally flat sheets of a core substrate layer to a lamination nip.
- Continuously feeding an intermediate film or foil layer that includes at least one security, functional, or decorative feature (such as holographic imagery, performance coatings, or printed patterns).
- Laminating the intermediate film or foil layer to the sheets of the core substrate layer to produce sheets of core stock.
- Producing composite laminate sheets by applying at least one overlay layer to an outer surface, such that the security, functional, or decorative features are "buried" between the intermediate film and the core substrate layer.
- The complaint also refers to infringement of "one or more claims" of the patent, suggesting the right to assert other claims may be reserved (Compl. ¶13).
III. The Accused Instrumentality
- Product Identification: The complaint accuses the "infringing processes" used by Defendant Chicago Laminating for making laminated sheets (Compl. ¶8, 11). No specific product line or service name is identified.
- Functionality and Market Context: The complaint alleges that Defendant "uses, actively induces the use of, and/or contributes to the use of a process for laminating sheets of a core substrate layer" that infringes the ’266 Patent (Compl. ¶12). The complaint does not provide specific technical details about how the accused processes operate or any allegations regarding their commercial importance or market position. No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint pleads infringement by reciting the language of Claim 1 and alleging that Defendant’s processes perform the claimed steps. It does not contain specific factual allegations mapping elements of the accused processes to the claim limitations.
’266 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A. continuously feeding a supply of generally flat sheets of a core substrate layer of a single material to a lamination nip; | The complaint alleges that Defendant's process performs this step, but provides no specific details on the feeding mechanism or substrate. | ¶12A | col. 8:30-33 |
| B. continuously feeding an intermediate film or foil layer to the lamination nip, wherein the intermediate film or foil layer includes at least one security, functional or decorative feature or layer on a surface of the intermediate film or foil layer for each of the plurality of sections; | The complaint alleges Defendant's process uses an intermediate film with the specified features, but provides no specific examples. | ¶12B | col. 8:34-39 |
| C. laminating the intermediate film or foil layer to the sheets of core substrate layer to produce sheets of core stock; and | The complaint alleges Defendant's process performs a lamination step. | ¶12C | col. 8:62-64 |
| D. producing the composite laminate sheets by additionally applying at least one print layer or at least one overlay layer to an outer surface of intermediate film or foil layer wherein the at least one security...feature...are buried between the intermediate film or foil layer and the core substrate layer. | The complaint alleges Defendant's process produces a final composite sheet with a buried feature layer. | ¶12D | col. 8:65-col. 9:2 |
- Identified Points of Contention:
- Evidentiary Questions: The complaint's allegations are not supported by specific factual content. A central issue will be whether discovery produces evidence that Defendant's process performs each and every step of Claim 1. For example, what evidence will show that Defendant's final product includes an "overlay layer" applied in a manner that "buries" the feature layer as required by limitation D?
- Scope Questions: The claim requires "continuously feeding" both "generally flat sheets" and an "intermediate film." This raises the question of how the term "continuously" applies to discrete sheets and how this process is distinct from the prior art roll-to-roll method the patent sought to improve upon (’266 Patent, col. 2:17-21).
V. Key Claim Terms for Construction
The complaint does not identify any specific claim term disputes. However, based on the patent’s prosecution and technological context, certain terms may become central to the case.
The Term: "generally flat sheets"
Context and Importance: This term is fundamental to distinguishing the invention from the prior art "roll-to-roll" lamination process. The definition will be critical to determining whether Defendant’s substrate material falls within the claim’s scope. Practitioners may focus on this term because it forms the primary basis for the patent's novelty argument over prior art.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent contrasts the invention with materials that suffer from "roll set curl," suggesting the term could broadly cover any substrate that is not fed from a tensioned roll and is flat enough to avoid such defects (’266 Patent, col. 2:19-20). The specification refers simply to a "stack of sheets" without extensive limitation (’266 Patent, col. 4:6-7).
- Evidence for a Narrower Interpretation: The specification provides an example of sheets cut to a specific size (e.g., "24"x28.5"") before processing (’266 Patent, col. 2:63-64). This could support a narrower construction requiring discrete, pre-cut sheets, as opposed to a web of material that is cut into sheets immediately before lamination.
The Term: "buried between the intermediate film or foil layer and the core substrate layer"
Context and Importance: This limitation in the final step of Claim 1 describes the structure of the final product. Infringement will depend on whether Defendant's process results in a laminate where the security/functional features are located in this specific structural position.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Figure 3, an embodiment of the final product, shows multiple layers (A, B, C, D) where the feature layer (C) is positioned between a core (D) and an overlay (A), with an additional print layer (B) (’266 Patent, Fig. 3). This could support an interpretation where "buried" simply means not on an external surface.
- Evidence for a Narrower Interpretation: Claim 1 explicitly requires the features to be buried "between the intermediate film or foil layer and the core substrate layer." This language suggests a very specific two-sided arrangement. A defendant might argue that its process, which might for instance place features within the core layer or on top of the overlay, does not meet this structural requirement.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement, stating Defendant encourages its customers to use the patented processes by "instructing, aiding, assisting, and encouraging" them (Compl. ¶13). It also alleges contributory infringement by selling a material for use in the process that is not a "staple article or commodity of commerce" (Compl. ¶14).
- Willful Infringement: The complaint alleges that Defendant had knowledge of the ’266 Patent before the lawsuit was filed and continued its infringing activities despite an "objectively high likelihood" that its actions constituted infringement (Compl. ¶16).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue appears to be one of evidence: The complaint provides no specific facts about the accused process. The case will likely depend on whether Plaintiff can obtain evidence through discovery to demonstrate that Defendant's lamination process meets every limitation of the asserted claim, especially the final structural requirement that features are "buried" under an overlay.
- A second core issue will likely be one of claim construction: The dispute may turn on the definition of "generally flat sheets." The court's interpretation of this term will determine whether the scope of the patent is limited to discrete, pre-cut sheets or if it can also read on other sheet-feeding methods that differ from traditional roll-to-roll lamination.