DCT
1:23-cv-00574
BCI Acrylic Inc v. As America Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: BCI Acrylic, Inc. (Illinois)
- Defendant: AS, America Inc. (Delaware)
- Plaintiff’s Counsel: Crowell & Moring LLP
- Case Identification: 1:23-cv-00574, N.D. Ill., 01/31/2023
- Venue Allegations: Plaintiff alleges venue is proper because Defendant maintains a regular and established place of business in the Northern District of Illinois.
- Core Dispute: Plaintiff alleges that Defendant’s process for manufacturing its "Passage Subway Tile Custom Shower Walls" infringes a patent related to methods for creating a simulated tile pattern on acrylic sheets.
- Technical Context: The technology concerns manufacturing methods for bathroom wall panels, specifically creating the appearance of tiled grout lines in acrylic sheets as an alternative to traditional ceramic tile installation.
- Key Procedural History: The complaint invokes 35 U.S.C. § 295, alleging that because the defendant refused to disclose its manufacturing process after a request, a presumption should arise that the accused products were made by the patented method.
Case Timeline
| Date | Event |
|---|---|
| 2015-02-18 | Priority Date for U.S. Patent No. 10,144,243 |
| 2018-12-04 | U.S. Patent No. 10,144,243 Issued |
| 2023-01-31 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,144,243 - “Method For Creating Simulated Tile Wall”
- Issued: December 4, 2018.
The Invention Explained
- Problem Addressed: The patent’s background section describes prior art methods for making simulated tile acrylic sheets as being costly and time-consuming. These methods required heating an acrylic sheet and pressing it into a physical mold, a process that necessitated highly skilled operators, a unique mold for each tile pattern, and offered little flexibility for customization (’243 Patent, col. 1:27-58).
- The Patented Solution: The invention claims a method that avoids heat and molds. Instead, it uses a computer-controlled tool, such as a CNC router, to engrave or cut "grout lines" directly into a sheet of acrylic according to a digitally stored design (’243 Patent, col. 2:50-67). This allows for customizable tile patterns to be created from a digital file without needing new physical molds, as illustrated in the process of a robotic arm 24 and router 26 cutting a pattern into an acrylic sheet 13 (’243 Patent, Fig. 3, col. 2:48-60).
- Technical Importance: This approach offers a method for manufacturing customizable, simulated tile panels that is potentially faster and more flexible than traditional molding techniques (’243 Patent, col. 2:1-4).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶13).
- The essential elements of independent claim 1 include:
- determining a first set of tile pattern characteristics (e.g., shapes, orientation, dimensions, cut depth);
- entering and storing these characteristics digitally in a database for a computer controlled material removal tool;
- selecting a sheet of acrylic material;
- placing the sheet below the computer controlled tool;
- retrieving the stored characteristics; and
- forming grout lines by using the tool to remove a predetermined amount of material from the sheet's surface based on the retrieved characteristics.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
- The accused products are the "Passage Subway Tile Custom Shower Walls" (Compl. ¶11).
Functionality and Market Context
- The complaint describes the accused products as "acrylic sheets that have a simulated tile pattern" (Compl. ¶11). The complaint alleges these products are made by an infringing process, but does not provide details on the specific manufacturing steps used by the Defendant (Compl. ¶13). It further alleges that the Plaintiff made "reasonable efforts to determine the process actually used" but was unable to do so, and that the Defendant refused to disclose the information upon request (Compl. ¶14-15). No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint alleges that the Defendant's manufacture of the Accused Products infringes at least claim 1 of the ’243 Patent (Compl. ¶13, ¶16). It does not, however, provide specific factual allegations mapping each claim element to a specific feature of the accused manufacturing process. The infringement theory relies on the assertion that the final Accused Products have a "simulated tile pattern," which the Plaintiff alleges is produced by a process that meets the limitations of claim 1 (Compl. ¶11, ¶13).
’243 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a. determining a first set of tile pattern characteristics comprising the steps of: i. determining a first set of tile shapes, ii. determining an orientation ... iii. determining a first set of tile dimensions, iv. determining a depth of cut ... | The complaint does not specify how Defendant determines these characteristics, but alleges that the process used to make the Accused Products infringes claim 1. | ¶13, ¶16 | col. 3:41-48 |
| b. entering the first set of tile pattern characteristics into a computer and storing the first set of tile pattern characteristics digitally in a database in a computer controlled material removal tool; | The complaint does not provide specific facts regarding Defendant's use of a computer, database, or computer-controlled tool. | ¶13, ¶16 | col. 3:49-53 |
| c. selecting a first sheet of acrylic material based on the first set of tile pattern characteristics... | The complaint identifies the Accused Products as "acrylic sheets" (Compl. ¶11), implying this step is performed. | ¶11, ¶13, ¶16 | col. 4:1-4 |
| d. placing the first sheet of acrylic material below the computer controlled material removal tool; | The complaint's infringement allegation is premised on the use of a process falling within claim 1, but provides no specific facts about Defendant's machinery or placement of materials. | ¶13, ¶16 | col. 4:5-6 |
| e. retrieving the first set of tile pattern characteristics stored in the database; and | The complaint does not provide specific facts regarding the retrieval of data from a database in Defendant's process. | ¶13, ¶16 | col. 4:7-8 |
| f. forming a first set of grout lines by removing from the top displayed surface of the first sheet of acrylic material by means of the computer controlled material removal tool a first predetermined amount of material... | The complaint alleges the Accused Products have a "simulated tile pattern," which it contends is made via an infringing process, but does not detail the specific method of formation. | ¶11, ¶13, ¶16 | col. 4:9-16 |
Identified Points of Contention
- Factual Question: The central dispute appears to be entirely factual: what manufacturing process does AS America actually use? The complaint provides no direct evidence and instead relies on the statutory presumption of 35 U.S.C. § 295 to shift the burden of production to the defendant (Compl. ¶15). The case will likely depend heavily on discovery into the defendant's manufacturing methods.
- Scope Questions: Should the case proceed, a key question may be the scope of "computer controlled material removal tool." The patent specification repeatedly refers to a "router" (’243 Patent, col. 2:51, col. 2:65, col. 3:9), raising the question of whether the claim could be construed as limited to router-based systems or if it covers other potential computer-controlled material removal technologies.
V. Key Claim Terms for Construction
The complaint does not provide sufficient detail to identify specific claim construction disputes. However, based on the patent's description, the following terms may become central to the infringement analysis.
"computer controlled material removal tool"
- Context and Importance: This term defines the core apparatus of the claimed invention. Practitioners may focus on this term because the patent distinguishes its invention from prior art molding processes (’243 Patent, col. 1:45-52). The scope of this term will determine what types of manufacturing equipment fall within the claim.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim uses the general term "material removal tool" without limitation to a specific type.
- Evidence for a Narrower Interpretation: The specification consistently and repeatedly describes the tool as a "computer controlled router" or a "robotic arm... connected to a router" (’243 Patent, col. 2:50-52, 2:65). This consistent description of a specific embodiment could be used to argue for a narrower construction limited to router-like engraving or cutting tools.
"determining a first set of tile pattern characteristics"
- Context and Importance: This initial step defines how a design is created. Its construction is important to understand whether the claim requires a specific, multi-step design process or covers any method of defining a pattern for machine execution.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term "determining" is general and could encompass a wide range of design activities, from manual input to automated generation.
- Evidence for a Narrower Interpretation: The claim recites four specific sub-steps for "determining," including defining shapes, orientation, dimensions, and cut depth (’243 Patent, col. 3:42-48). An argument could be made that an accused process must involve the discrete determination of all four characteristics to meet this limitation.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement under 35 U.S.C. § 271(b), stating on information and belief that AS America "knowingly and intentionally" encourages and aids others to make the Accused Products using the patented method (Compl. ¶17). No specific facts, such as instructional materials, are cited to support this allegation.
- Willful Infringement: Willfulness is alleged based on the assertion that AS America "is aware of the '243 Patent and BCI's rights" and continued its infringing acts without a good faith belief of invalidity or non-infringement (Compl. ¶20). The complaint does not specify how or when AS America became aware of the patent.
VII. Analyst’s Conclusion: Key Questions for the Case
Given the conclusory nature of the complaint, the initial phase of this case will likely focus on fundamental factual and procedural questions.
- A primary issue will be one of procedural burden-shifting: will the Plaintiff’s allegation that it was denied information about the Defendant's process be sufficient for the court to apply the presumption under 35 U.S.C. § 295, thereby requiring the Defendant to prove its process is non-infringing?
- The dispositive question is one of factual discovery: does the undisclosed manufacturing process used by AS America for its "Passage Subway Tile Custom Shower Walls" actually involve the steps recited in claim 1, specifically the use of a "computer controlled material removal tool" to engrave patterns from a digital database, or does it use an alternative method such as the molding described as prior art in the patent?
- Should the case advance, a key legal question will be one of definitional scope: does the term "computer controlled material removal tool," as used in the patent, read broadly on any automated surface-modification technology, or is its meaning confined by the specification's repeated references to a "router"?