2:24-cv-10719
Turf Design Inc v. Acoufelt LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Turf Design, Inc. (Illinois)
- Defendant: Acoufelt, LLC (Michigan)
- Plaintiff’s Counsel: Duane Morris LLP
- Case Identification: 2:24-cv-10719, E.D. Mich., 03/20/2024
- Venue Allegations: Venue is alleged to be proper in the Eastern District of Michigan because the Defendant resides in the district and maintains a regular and established place of business in Auburn Hills, Michigan.
- Core Dispute: Plaintiff alleges that Defendant’s "SoftenUp" brand of ceiling systems infringes three patents related to dynamic acoustic drop ceiling systems and their installation methods.
- Technical Context: The technology at issue pertains to modular acoustic systems for drop ceilings, a field that combines architectural aesthetics with sound absorption for commercial and office interiors.
- Key Procedural History: The complaint alleges that the Defendant hired several former design managers from the Plaintiff who had detailed knowledge of the patented technology. The Plaintiff also sent pre-suit notice letters to the Defendant regarding each of the three patents-in-suit. The complaint also notes that an administrative error regarding the assignee of the '827 Patent was corrected by petition to the USPTO.
Case Timeline
| Date | Event |
|---|---|
| 2016-06-30 | Priority Date for '004, '827, and '045 Patents |
| 2021-12-14 | U.S. Patent No. 11,199,004 Issues |
| 2023-05-08 | Plaintiff sends notice letter regarding '004 Patent |
| 2023-12-05 | U.S. Patent No. 11,834,827 Issues |
| 2023-12-21 | Plaintiff sends notice letter regarding '827 Patent |
| 2024-03-19 | U.S. Patent No. 11,933,045 Issues |
| 2024-03-19 | Plaintiff sends notice letter regarding '045 Patent |
| 2024-03-20 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,199,004 - "Apparatus And System For Dynamic Acoustic Drop Ceiling System And Methods Thereof," issued December 14, 2021
The Invention Explained
- Problem Addressed: The patent describes a need for a dynamic acoustic drop ceiling system that can be installed quickly and easily without requiring extra tools, clips, or attachment hardware common in prior art systems ('004 Patent, col. 2:16-24). Existing solutions are described as often being complex to assemble and install ('004 Patent, col. 2:5-15).
- The Patented Solution: The invention is a system comprising multiple acoustic ceiling products (e.g., felt baffles or slats) designed with special installation slots. These products are first installed into a "backer panel," which creates a complete "tile." This tile assembly is then installed onto a standard drop ceiling grid, creating an aesthetically pleasing visual effect (such as an undulating image) while also providing acoustic benefits ('004 Patent, Abstract; col. 2:32-45). The configuration of the backer panel is designed to hide the underlying ceiling grid from view ('004 Patent, col. 2:61-65).
- Technical Importance: This approach seeks to provide a modular, tool-less system that integrates decorative forms with acoustic function, simplifying the process of creating complex ceiling-scapes. ('004 Patent, col. 2:16-24).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶21).
- The essential elements of Claim 1 are:
- A dynamic acoustic drop ceiling system, comprising:
- a plurality of acoustic drop ceiling products, each comprising an edge and a recess;
- at least one backer panel configured with at least one indent to accept the edge;
- the backer panel configured for installation into a drop ceiling hanger;
- wherein the combination of the backer panel and plurality of acoustic drop ceiling products is configured for installation into a drop ceiling hanger, such that the backer panel, when installed, will be parallel to a ceiling and will block the entire view of the ceiling from directly below.
U.S. Patent No. 11,834,827 - "Apparatus And System For Dynamic Acoustic Drop Ceiling System And Methods Thereof," issued December 5, 2023
The Invention Explained
- Problem Addressed: As with the related '004 Patent, this patent addresses the need for an easy-to-install drop ceiling system that provides both aesthetic and acoustic qualities without extra hardware. ('827 Patent, col. 2:10-20).
- The Patented Solution: This patent claims a "ceiling tile section" as a complete unit. The invention consists of a plurality of ceiling products, each having specifically structured slots (defined as a base portion and an arm portion forming a recess), which are installed into a backer panel that has corresponding openings. The resulting "ceiling tile section" is then ready for installation into a ceiling hanger system ('827 Patent, Abstract; col. 6:45-63).
- Technical Importance: The invention provides a specific mechanical interface between the individual acoustic elements and a backer panel, creating a pre-fabricated tile that simplifies final on-site installation. ('827 Patent, col. 2:56-62).
Key Claims at a Glance
- The complaint asserts at least independent claim 11 (Compl. ¶51).
- The essential elements of Claim 11 are:
- A ceiling system comprising a ceiling tile section, which comprises:
- a plurality of ceiling products, each having a main body and a pair of slots;
- a backer panel with a plurality of openings;
- the ceiling products are installed into the backer panel so the main body is below the backer panel and the slots extend through the openings and protrude from the top surface.
U.S. Patent No. 11,933,045 - "Ceiling System," issued March 19, 2024
Technology Synopsis
This patent, from the same family as the '004 and '827 patents, discloses a ceiling system where acoustic components are assembled onto a backer panel to form a "ceiling tile." The invention focuses on the configuration of "tabs" on the acoustic components, which pass through openings in the backer panel and are themselves structured to engage directly with a ceiling hanger system for mounting ('045 Patent, Abstract). This design integrates the mounting feature into the acoustic components, aiming to create a monolithic, easily installed tile ('045 Patent, col. 4:1-9).
Asserted Claims
The complaint asserts at least independent claim 19 (Compl. ¶81).
Accused Features
The complaint alleges that Defendant's "SoftenUp" brand ceiling systems, which consist of acoustic components assembled into a supporting panel or frame, infringe the claimed invention (Compl. ¶¶15, 81).
III. The Accused Instrumentality
Product Identification
The accused products are a line of ceiling systems sold under Defendant's "SoftenUp" brand, with the complaint specifically identifying the "SoftenUp/plateau" product line (Compl. ¶15).
Functionality and Market Context
The complaint alleges the Accused Products are ceiling systems that are manufactured, sold, and offered for sale in direct competition with Plaintiff's products (Compl. ¶15). The products are marketed on Defendant's website for use in ceiling applications, suggesting they are intended to provide aesthetic and/or acoustic benefits in commercial spaces (Compl. ¶15).
IV. Analysis of Infringement Allegations
The complaint references, but does not include, claim chart exhibits (Exhibits I, K, and L) that purportedly detail the infringement of the asserted patents (Compl. ¶¶21, 51, 81). In the absence of these exhibits, the infringement theory is summarized below based on the complaint's narrative allegations.
'004 Patent Infringement Allegations
The complaint asserts that Acoufelt's SoftenUp systems meet the limitations of at least Claim 1 of the '004 Patent (Compl. ¶21). The infringement theory appears to be that the Accused Products comprise a "plurality of acoustic drop ceiling products" that are installed into a frame or other support structure, which Plaintiff contends is a "backer panel." This combined system is then allegedly installed into a standard drop ceiling grid in a manner that satisfies the claim limitations, including the requirement that the backer panel blocks the view of the ceiling above (Compl. ¶¶15, 21; '004 Patent, cl. 1).
'827 Patent Infringement Allegations
The complaint asserts that the Accused Products infringe at least Claim 11 of the '827 Patent (Compl. ¶51). The theory is that the SoftenUp systems, as sold or assembled, constitute a "ceiling tile section" as claimed. This section is alleged to include a plurality of "ceiling products" installed into a "backer panel," where the products have slots that pass through openings in the panel, matching the structure recited in Claim 11 (Compl. ¶¶15, 51; '827 Patent, cl. 11).
No probative visual evidence provided in complaint.
V. Key Claim Terms for Construction
Term: "backer panel" ('004 Patent, Claim 1)
- Context and Importance: The determination of infringement for the '004 patent may hinge on whether the support structure of the Accused Products meets the definition of a "backer panel." Practitioners may focus on this term because its construction will determine if the accused product's frame or grid-like support falls within the claim, particularly with respect to its material properties and visual-blocking function.
- Intrinsic Evidence for a Broader Interpretation: The specification suggests the panel can be made of various materials, stating it "can also be made of felt, similar to the drop ceiling product" or "other materials," which may support an argument that the term is not limited to a specific type of solid sheet ('004 Patent, col. 6:21-29).
- Intrinsic Evidence for a Narrower Interpretation: The claim requires the backer panel to be made of an "opaque material" and to "block the entire view of said ceiling" ('004 Patent, col. 8:60-67). The patent figures consistently depict the backer panel as a solid, continuous sheet (e.g., '004 Patent, Figs. 8A, 10, 11), which could support a narrower construction that excludes open-frame or grid-like structures.
Term: "ceiling tile section" ('827 Patent, Claim 11)
- Context and Importance: This term appears in the preamble of Claim 11 and defines the invention as a discrete unit. Its construction is critical to determining the point of infringement—whether Acoufelt is liable for selling the claimed "section" as a whole, or if it only sells constituent parts.
- Intrinsic Evidence for a Broader Interpretation: The patent does not provide an explicit definition for "ceiling tile section," which may allow for an interpretation that includes a kit of parts specifically designed and intended to be assembled into the claimed section.
- Intrinsic Evidence for a Narrower Interpretation: Claim 11 describes the "plurality of ceiling products" as already "installed into the backer panel," which suggests that the "ceiling tile section" is a pre-assembled or integrated product ('827 Patent, cl. 11). The specification describes the assembly process as creating a tile section that is then "ready to be installed" as a unit ('827 Patent, col. 6:59-63).
VI. Other Allegations
Indirect Infringement
The complaint alleges both induced and contributory infringement for all three patents. The inducement claim is based on allegations that Acoufelt encourages and instructs its customers and installers, through materials like its "Specification Sheet," to assemble and use the Accused Products in an infringing manner (Compl. ¶¶30, 60, 90). The contributory infringement claim is based on allegations that the Accused Products are specially made for an infringing use and have no substantial non-infringing uses (Compl. ¶¶40-41, 70-71, 100-101).
Willful Infringement
The complaint alleges willful infringement based on both pre-suit and post-suit knowledge. It alleges pre-suit knowledge from specific notice letters sent for the '004 patent (May 8, 2023), the '827 patent (December 21, 2023), and the '045 patent (March 19, 2024) (Compl. ¶19). It further supports this allegation by claiming that Acoufelt hired former Turf design managers who had "detailed knowledge of Turf's patents and patented products" (Compl. ¶17).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim construction: can the term "backer panel," as used in the '004 patent, be construed to read on the support structure of Acoufelt's SoftenUp system, especially given the claim requirements that it be "opaque" and "block the entire view" of the ceiling?
- A key factual question will be one of product configuration: does Acoufelt make, use, or sell a pre-assembled "ceiling tile section" as recited in the '827 patent's claims, or does it only supply components? The answer may determine whether the primary infringement theory is direct or indirect infringement.
- A central question for damages will be one of scienter: can the plaintiff establish that the defendant's alleged infringement was willful, based on the combination of hiring former employees and continuing to sell the accused products after receiving multiple, specific pre-suit notice letters?