DCT
1:23-cv-15889
Somero Enterprises Inc v. Masterscreed Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Somero Enterprises, Inc. (Delaware)
- Defendant: Masterscreed Ltd. (United Kingdom) and Masterscreed USA (Illinois)
- Plaintiff’s Counsel: Honigman LLP
- Case Identification: 1:23-cv-15889, N.D. Ill., 11/13/2023
- Venue Allegations: Plaintiff alleges venue is proper in the Northern District of Illinois because Defendant Masterscreed USA resides in the district. Alternatively, venue is alleged over Defendant Masterscreed UK based on purposeful direction of activities at residents of the district and pursuant to Federal Rule of Civil Procedure 4(k)(2).
- Core Dispute: Plaintiff alleges that Defendant’s laser-guided concrete screeding machines infringe a patent related to a wheeled concrete screeding device.
- Technical Context: The technology relates to automated machinery for leveling uncured concrete to a precise grade, a process critical in large-scale flooring and paving construction.
- Key Procedural History: The complaint details pre-suit correspondence between the parties beginning in January 2023. Public records associated with the patent-in-suit, U.S. Patent No. 8,038,366, indicate that an Inter Partes Review (IPR) proceeding, IPR2024-00051, was filed by a third party on October 24, 2023, shortly before this complaint was filed. An IPR certificate issued on March 3, 2025 states that claims 1-15 of the patent, which includes the only claim asserted in this complaint, have been cancelled. This cancellation raises a threshold question about the viability of the infringement claims, pending any appeal of the IPR decision.
Case Timeline
| Date | Event |
|---|---|
| 2004-07-26 | ’366 Patent Priority Date |
| 2011-10-18 | ’366 Patent Issue Date |
| 2012-01-01 | Defendant allegedly began importing Accused Products for display |
| 2017-12-01 | Plaintiff allegedly began marking products with ’366 Patent |
| 2023-01-13 | Plaintiff sent first notice letter to Defendant |
| 2023-03-22 | Defendant’s counsel responded to notice letter |
| 2023-10-24 | Inter Partes Review (IPR2024-00051) filed against ’366 Patent |
| 2023-11-13 | Complaint Filing Date |
| 2025-03-03 | IPR Certificate issued cancelling claims 1-15 of ’366 Patent |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Patent No. 8,038,366, "Wheeled Concrete Screeding Device," issued October 18, 2011.
- The Invention Explained:
- Problem Addressed: The patent describes the process of spreading and striking-off uncured concrete as labor-intensive and costly, particularly where large, automated screeding machines cannot be used (’366 Patent, col. 1:36-49).
- The Patented Solution: The invention is a wheeled, operator-guided device designed to move through uncured concrete. It features a "screed head" that follows the wheels and includes two key components: a "grade establishing element" (e.g., a plow) and a "vibratable member." The height of the grade establishing element is automatically adjusted in response to a signal from a laser receiver to create a level surface. The vibratable member follows behind this element and is described as "at least partially float[ing]" on the newly struck-off concrete surface to vibrate, compact, and finish it (’366 Patent, Abstract; col. 25:27-39).
- Technical Importance: This design sought to automate and improve the accuracy of screeding on smaller job sites by combining laser-guided leveling with a floating vibration plate, thereby reducing the need for manual labor ('366 Patent, col. 2:47-53).
- Key Claims at a Glance:
- The complaint asserts independent claim 1 ('366 Patent, Compl. ¶41).
- The essential elements of independent claim 1 are:
- A wheeled unit with at least two wheels supporting a frame, movable through uncured concrete.
- A screed head supported at the rearward end of the frame, comprising a "grade establishing element" and a "vibratable member."
- The grade establishing element is vertically adjustable in response to a signal from a laser receiver to establish a struck-off surface at a desired grade.
- The vibratable member is adjustably attached to the rear of the grade establishing element, "at least partially floats behind" it, and is "at least partially supported at the struck-off surface" of the uncured concrete.
- The complaint reserves the right to assert additional claims after discovery (Compl. ¶41).
III. The Accused Instrumentality
- Product Identification: The accused instrumentalities are the Masterscreed MS550, MS575, and MS355 models of laser-guided concrete screeds (Compl. ¶22).
- Functionality and Market Context:
- The complaint alleges the Accused Products are wheeled devices that use laser guidance systems to level uncured concrete (Compl. ¶21). The infringement allegations describe the products as having a wheeled frame, a rear-mounted screed head, and Trimble brand laser receivers for automatic grade control (Compl. ¶¶42-44). The screed head is alleged to include a "double blade, auger" (the grade establishing element) and a "vibrating plate" (the vibratable member) (Compl. ¶42, p. 12).
- A photograph from the complaint's claim chart shows the accused MS550 machine with annotations pointing to the wheeled unit, the screed head, and the laser receivers (Compl. ¶42, p. 13).
IV. Analysis of Infringement Allegations
- ’366 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a wheeled unit having at least two wheels for movably supporting a frame portion of said wheeled unit, said frame portion having a forward end and a rearward end, wherein said wheeled unit is movable through uncured concrete in a screeding direction; | The MS550 is a wheeled unit with at least two wheels that supports a frame and is movable through uncured concrete. | ¶42 | col. 6:28-34 |
| a screed head supported at said rearward end of said frame portion and following behind said wheeled unit when said wheeled unit is moved in said screeding direction, said screed head comprising a grade establishing element and a vibratable member; | The MS550 has a screed head, which includes a "double blade, auger and vibrating plate," supported at the rear of its frame. The complaint includes a photograph illustrating this rearward placement. | ¶42 | col. 25:30-36 |
| wherein said grade establishing element is generally vertically adjustable responsive to a signal from a laser receiver disposed at said screed head to establish a struck-off surface of the uncured concrete at a desired grade...; | The MS550's grade establishing element is alleged to be vertically adjustable in response to signals from its Trimble LR410 laser receivers to establish a desired grade. | ¶42 | col. 7:11-20 |
| wherein said vibratable member is adjustably attached at a rearward end of said grade establishing element and wherein said vibratable member at least partially floats behind said grade establishing element on the struck-off surface of the uncured concrete and is at least partially supported at the struck-off surface... | The MS550 has a vibratable member (vibrating plate) that is alleged to float behind the grade establishing element and be partially supported by the struck-off concrete surface. | ¶42 | col. 13:5-14 |
- Identified Points of Contention:
- Validity Question: The primary point of contention is the validity of the asserted claim itself. The subsequent IPR cancellation of claim 1 (along with claims 2-15) by the USPTO suggests that the patent claims may not be valid over the prior art. The litigation's progression will likely depend on whether this cancellation is appealed and, if so, the outcome of that appeal. A court may be asked to stay the case pending final resolution of the IPR.
- Technical Question: Assuming the claim survives a potential appeal, a key technical dispute will likely center on whether the accused products' "vibrating plate" actually "floats" on and is "partially supported at the struck-off surface" of the concrete. The defense may argue that its vibrating plate is rigidly affixed to the machine's frame and its height is dictated solely by the frame, not by the concrete surface it is finishing, thereby failing to meet this claim limitation.
V. Key Claim Terms for Construction
- The Term: "at least partially floats behind" / "at least partially supported at the struck-off surface"
- Context and Importance: This language describes the core functional relationship between the vibrating member and the freshly leveled concrete. The construction of this term is critical because it defines whether the claim requires the vibrating member to derive some of its vertical support from the concrete itself, or if it can be rigidly held by the machine frame at a fixed height relative to the grade-establishing element. Practitioners may focus on this term because it appears to be a primary point of novelty and a likely focus of non-infringement arguments.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification notes that the attachment links allow the vibrating member to "freely float relative to the plow" ('366 Patent, col. 13:12-13), which might be argued to encompass any arrangement where the vibrator is not rigidly fixed in all axes of motion.
- Evidence for a Narrower Interpretation: The explicit claim language requiring the member to be "at least partially supported at the struck-off surface" suggests that the concrete must bear some of the member's weight (’366 Patent, col. 25:36-39). The abstract makes the same statement. This could be used to argue that systems where the vibrating member's vertical position is entirely dictated by the machine's frame, regardless of the concrete surface, do not infringe.
VI. Other Allegations
- Willful Infringement: The complaint alleges willful infringement based on both pre-suit and post-suit conduct. It pleads constructive notice via patent marking since at least December 2017 (Compl. ¶26) and actual notice via a series of letters and emails beginning January 13, 2023 (Compl. ¶¶27, 35). Plaintiff alleges that infringement continued after Defendants had knowledge of the patent (Compl. ¶¶46, 58).
VII. Analyst’s Conclusion: Key Questions for the Case
- A dispositive issue will be one of claim validity: can the infringement claim proceed, given that the U.S. Patent and Trademark Office has issued a certificate cancelling the asserted claim, Claim 1, in an Inter Partes Review? The case’s future likely hinges on the outcome of any appeal of that administrative decision.
- A key infringement question, should the claim be revived, will be one of technical operation and claim scope: does the accused machine's "vibrating plate" meet the claim requirement that it "at least partially floats" on and is "partially supported at the struck-off surface" of the concrete, or is there a fundamental mismatch between the accused product's rigid structure and the claimed floating functionality?