DCT
0:19-cv-02464
Boral Stone Products v. Da Distribution
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Boral Stone Products LLC (Delaware)
- Defendant: D.A. Distribution, Inc. d/b/a Waypost Stone Siding, Boulder Creek Stone and Brick Co., and Condor Fireplace and Stone Co. (collectively "Waypost") (Minnesota)
- Plaintiff’s Counsel: Fredrikson & Byron, P.A.; Alston & Bird LLP
- Case Identification: 0:19-cv-02464, D. Minn., 09/06/2019
- Venue Allegations: Venue is alleged to be proper in the District of Minnesota because the defendant corporations are incorporated in, reside in, and maintain an office within the district.
- Core Dispute: Plaintiff alleges that Defendant’s cast stone veneer siding panels infringe a patent directed to prefabricated wall panels that incorporate a mounting element with features for alignment and water drainage.
- Technical Context: The technology relates to prefabricated building materials designed to replicate the appearance of traditional stone masonry while simplifying installation and improving performance characteristics like water management.
- Key Procedural History: The patent-in-suit issued on August 13, 2019, less than one month before the complaint was filed. The complaint asserts infringement of several claims, including claims 11 and 12, which do not exist in the issued patent.
Case Timeline
| Date | Event |
|---|---|
| 2008-02-06 | '216 Patent Priority Date |
| 2018-10-01 | Accused Waypost Stone Siding Introduced (approx.) |
| 2019-08-13 | U.S. Patent No. 10,378,216 Issues |
| 2019-09-06 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,378,216 - Prefabricated Wall Panel with Tongue and Groove Construction, issued August 13, 2019
The Invention Explained
- Problem Addressed: The patent describes a need for prefabricated wall panels that are not only durable but also feature improved handling characteristics and simplified installation processes compared to prior art panels. (’216 Patent, col. 1:47-54).
- The Patented Solution: The invention is a prefabricated wall panel comprising a precast body (e.g., concrete) with an integrated mounting element, typically made of metal. A portion of this element is embedded in the panel body for stability, while another portion projects from the top edge. (’216 Patent, Abstract). This projecting portion includes "dimples" that create a "set back," forming an air and water drainage gap between the panel and the underlying wall, and also includes a tongue-and-groove feature to help align and interlock vertically stacked panels. (’216 Patent, col. 5:15-25, 5:52-65; Fig. 3).
- Technical Importance: The design aims to combine the functions of mounting, panel alignment, and water management into a single, integrated component, thereby reducing installation complexity and time. (’216 Patent, col. 6:1-4).
Key Claims at a Glance
- The complaint asserts infringement of independent claim 1 and dependent claims 2, 3, and 5. It also purports to assert claims 11 and 12, though U.S. Patent No. 10378216 contains only 9 claims (Compl. ¶¶ 18, 21).
- Independent Claim 1 recites:
- A panel with a body made of concrete, having a front design element and a rear surface.
- A metal mounting element projecting from the body, with a first end portion extending above the body's top edge and a second end portion embedded within the body.
- The first end portion comprises a "plurality of protrusions in the form of dimples" spaced along its length.
- Each dimple is configured to receive a nail or fastener.
- The dimples serve as a "set back feature" to provide spacing between the panel's rear surface and a supporting wall.
III. The Accused Instrumentality
Product Identification
The accused products are the "Waypost™ Premium Stone Siding" line of cast stone veneer wall panels (Compl. ¶¶ 5, 17).
Functionality and Market Context
The complaint describes the accused products as cast stone veneer wall panels that imitate the appearance and texture of real stone (Compl. ¶17). A key technical feature highlighted in the complaint is the product's "integral drainage plane" for water drainage (Compl. p. 5). An image provided in the complaint shows a panel with a textured stone-like face and a metal strip along the top edge featuring circular perforations or protrusions. This image shows the front, side, and rear view of the Waypost Stone Siding panel (Compl. p. 5).
IV. Analysis of Infringement Allegations
The complaint alleges that the accused Waypost products embody every limitation of the asserted claims but refers to a claim chart (Exhibit F) that was not filed with the complaint (Compl. ¶18, 21). The infringement theory must therefore be constructed from the general allegations and product descriptions.
’216 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a body comprising a front surface that includes a design element and a rear surface, the body having a bottom edge and a top edge, wherein the body comprises concrete | The accused product is a "cast stone veneer wall panel," which is a form of concrete, and has a front surface imitating stone. | ¶17 | col. 8:20-24 |
| a mounting element formed of metal and projecting from the body, the mounting element comprising a first end portion extending above the top edge of the body and a second end portion embedded within the body | Images of the accused product show a metal strip along the top edge of the stone-like body. The complaint's allegation that the product meets every limitation implies this strip is embedded in and projects from the panel body. | ¶18; p. 5 | col. 8:25-29 |
| wherein the first end portion of the mounting element comprises a plurality of protrusions in the form of dimples spaced along a length of the first end portion and configured to provide spacing between adjacent dimples... | The product's advertised "integral drainage plane" and the raised features visible on the metal mounting strip in complaint images are alleged to constitute the claimed "protrusions in the form of dimples." | p. 5 | col. 8:30-34 |
| ...each dimple configured to receive a corresponding nail or fastener and having a diameter configured to receive a head of each corresponding nail or fastener | The circular features on the accused product's mounting strip appear to be openings or indentations for fasteners. | p. 5 | col. 8:34-37 |
| wherein the dimples serve as a set back feature configured to provide spacing between the rear surface of the body and a supporting wall on which the panel is configured to be installed | The "integral drainage plane" of the accused product is alleged to perform the function of the claimed "set back feature" by creating a space for water drainage. | p. 5 | col. 8:38-43 |
Identified Points of Contention
- Scope Questions: A central dispute may be whether the features on the accused product's mounting strip meet the definition of "protrusions in the form of dimples." The interpretation of this term will be critical. Additionally, the case will question whether the function of Waypost's "integral drainage plane" is the same as the function of the claimed "set back feature."
- Technical Questions: The complaint does not provide evidence showing that the accused product's metal strip has a "second end portion embedded within the body" as required by the claim. The exact structure and mechanism of the accused "integral drainage plane" are not detailed, raising the question of how it technically compares to the spacing function described and claimed in the patent.
- Pleading Questions: The complaint's assertion of non-existent claims (11 and 12) may be raised by the defense to challenge the adequacy of the plaintiff's pre-filing investigation under Federal Rule of Civil Procedure 11.
V. Key Claim Terms for Construction
"protrusions in the form of dimples"
- Context and Importance: This term is the structural heart of the invention's water management feature. The infringement analysis will depend heavily on whether the structures on the Waypost mounting strip fall within the scope of this term.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states, "The protrusion 21 may take the form of dimples, slots, ribs or any other structure that provides a set back means" (’216 Patent, col. 5:10-13). A plaintiff might argue that "dimples" in the claim should be read in light of this passage as exemplary, not strictly limiting.
- Evidence for a Narrower Interpretation: A defendant may argue that by choosing the specific word "dimples" in the claim, after describing other options in the specification, the patentee deliberately narrowed the claim to that specific structure. The specification also provides specific dimensions for "dimples," which could be used to argue for a more limited construction (’216 Patent, col. 5:26-34).
"set back feature"
- Context and Importance: This functional term defines what the "dimples" must do. Proving infringement will require showing that the accused product's features create the claimed "set back."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim itself defines the feature's function as being "configured to provide spacing between the rear surface of the body and a supporting wall" (’216 Patent, col. 8:39-42). This suggests any structure that achieves this spacing could qualify.
- Evidence for a Narrower Interpretation: The specification links this feature to providing "an air space A" for "good ventilation" and ensuring the fastener head does not interfere with the next panel (’216 Patent, col. 5:15-25, 5:38-41). A defendant could argue the "set back feature" must provide both drainage and these specific ventilation and non-interference functions.
VI. Other Allegations
- Indirect Infringement: The complaint does not allege indirect infringement (inducement or contributory infringement). The allegations are directed at Defendant's own acts of making, using, offering for sale, and selling the accused products, which falls under direct infringement (Compl. ¶22).
- Willful Infringement: Willfulness is alleged based on knowledge of the patent "since at least as early as the filing of this Complaint" (Compl. ¶19). This allegation supports only a claim for post-filing willfulness, as no facts are alleged to support pre-suit knowledge. The prayer for relief seeks treble damages and a declaration that the case is exceptional (Compl. ¶25; Prayer for Relief (d), (e)).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim construction and scope: can the term "protrusions in the form of dimples," as used in the claim, be construed to read on the specific structures that form the "integral drainage plane" of the accused Waypost product? The outcome will likely depend on whether the court adopts a narrow, literal definition of "dimples" or a broader one informed by the specification.
- A key evidentiary question will be establishing the precise physical construction of the accused product. Discovery will be necessary to determine whether the metal mounting element is "embedded within the body" as claimed and to allow for a technical comparison between the patented "set back feature" and the actual operation of the accused "integral drainage plane."
- The case may also present a procedural question regarding the sufficiency of the plaintiff's pre-suit investigation, given the facial error in the complaint of asserting infringement of claims that do not exist in the patent-in-suit.