DCT

0:24-cv-01111

Sqip LLC v. Cambria Co LLC

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 0:24-cv-01111, E.D. Tex., 03/13/2023
  • Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas because Defendant maintains regular and established places of business, including facilities and showrooms, within the district.
  • Core Dispute: Plaintiff alleges that Defendant’s engineered quartz slab products are manufactured using processes that infringe five of Plaintiff's U.S. patents.
  • Technical Context: The technology at issue involves methods for manufacturing engineered quartz surfaces, such as countertops, with aesthetic features like veins and swirls designed to mimic natural stone.
  • Key Procedural History: The complaint alleges a complex history between the parties, including that Defendant was aware of some of the patents-in-suit as early as February 2018. It is also alleged that Defendant previously initiated its own patent litigation against a distributor of products made by Plaintiff's licensee, and in that litigation, Defendant relied on one of the patents-in-suit (’516 Patent) as a basis for its allegations. The complaint further mentions that Defendant sought to license Plaintiff's patent portfolio during settlement discussions related to that prior litigation.

Case Timeline

Date Event
2014-09-25 U.S. Patent No. 9,511,516 Priority Date
2016-03-02 U.S. Patent No. 10,730,806 Priority Date
2016-08-01 U.S. Patent No. 10,843,977 Priority Date
2016-12-06 U.S. Patent No. 9,511,516 Issued
2017-03-23 U.S. Patent No. 9,707,698 Priority Date
2017-07-18 U.S. Patent No. 9,707,698 Issued
2018-01-02 U.S. Patent No. 10,376,912 Priority Date
2018-02-01 (approx.) Cambria allegedly aware of ’516 and ’698 Patents
2019-08-13 U.S. Patent No. 10,376,912 Issued
2020-08-04 U.S. Patent No. 10,730,806 Issued
2020-11-24 U.S. Patent No. 10,843,977 Issued
2021-02-01 (approx.) Cambria files patent lawsuit against Hirsch Glass Corp.
2021-12-01 (approx.) Cambria allegedly aware of ’912, ’806, and ’977 Patents
2022-09-01 (approx.) Cambria again requests license to SQIP's patent portfolio
2023-03-13 Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 9,511,516 - "Method and Apparatus for Manufacturing Quartz Slab"

  • Patent Identification: U.S. Patent No. 9,511,516, "Method and Apparatus for Manufacturing Quartz Slab," issued December 6, 2016 (’516 Patent). (Compl. ¶17).
  • The Invention Explained:
    • Problem Addressed: The patent’s background section notes a drawback of engineered quartz stone is its "perceived lack of natural, random looking veins and color patterns" when compared to natural stones like marble and granite (’516 Patent, col. 1:43-50).
    • The Patented Solution: The invention is a method and apparatus for manufacturing quartz slabs where different mixtures of quartz and resin are supplied to an inner chamber of a mold in a controlled, sequential manner. A computer processor directs the supply of a mixture through a first region of the mold's top opening during a "first state," and then through a second, different region during a "second state," thereby creating distinct patterns or veins within the slab before it is cured (’516 Patent, Abstract; col. 2:58-67).
    • Technical Importance: This method provides manufacturers with precise control over the placement of different colored materials, enabling the creation of engineered stone slabs with more complex and aesthetically desirable veining patterns (’516 Patent, col. 1:46-50).
  • Key Claims at a Glance:
    • The complaint asserts at least independent method claim 14 (Compl. ¶¶43, 45).
    • Essential elements of claim 14 include:
      • supplying a first mixture of quartz and resin to an inner chamber of a mold with a top opening;
      • using a computer processor to controllably supply the first mixture to the inner chamber through a first region of the top opening (but not a second region) during a first state; and
      • using the computer processor to controllably supply the first mixture to the inner chamber through the second region of the top opening (but not the first region) during a second state.

U.S. Patent No. 10,376,912 - "Apparatus and Method for Depositing Color Into Cracks of a Moving Formed Quartz Slab To Create Veins in an Engineered Stone"

  • Patent Identification: U.S. Patent No. 10,376,912, "Apparatus and Method for Depositing Color Into Cracks of a Moving Formed Quartz Slab To Create Veins in an Engineered Stone," issued August 13, 2019 (’912 Patent). (Compl. ¶19).
  • The Invention Explained:
    • Problem Addressed: The patent seeks to provide an improved method of producing a quartz-based slab with single or multiple color patterns and veins (’912 Patent, col. 1:62-67).
    • The Patented Solution: The invention describes a method where a "soft, damp, slightly pressed slab" is physically manipulated to introduce a crack. This is achieved by using a device, such as a lift bar, to move one portion of the slab vertically out of alignment with the surrounding area. While the crack is held open, a colored material is deposited into it. The force is then removed, allowing the crack to close and encapsulate the colored material to form a vein before the slab is cured (’912 Patent, Abstract; col. 4:1-14).
    • Technical Importance: This technology offers a mechanical method for creating well-defined, vein-like features in an uncured slab, providing another tool for creating products that mimic the appearance of natural stone (’912 Patent, col. 1:24-27).
  • Key Claims at a Glance:
    • The complaint asserts at least independent method claim 11 (Compl. ¶¶59, 61).
    • Essential elements of claim 11 include:
      • causing a first portion of a slab to move vertically out of alignment, thereby introducing a crack by using a device to apply force;
      • depositing a colored material into the open crack to form a vein;
      • causing the crack to close by no longer applying the force after the material is deposited; and
      • wherein the slab is a "damp particulate mixture."

U.S. Patent No. 10,730,806 - "Method and Apparatus for Forming Engineered Stone"

  • Patent Identification: U.S. Patent No. 10,730,806, "Method and Apparatus for Forming Engineered Stone," issued August 4, 2020 (’806 Patent). (Compl. ¶21).
  • Technology Synopsis: The patent addresses the lack of random veining in engineered stone by teaching a method of creating a marbleized effect (’806 Patent, col. 1:53-56). The method involves layering different composite materials, compressing them, disrupting the compressed layers to break them into randomly re-oriented fragments, and then compressing the fragments again (’806 Patent, Abstract).
  • Asserted Claims: At least independent method claim 18 is asserted (Compl. ¶¶74-75).
  • Accused Features: The complaint alleges that the "swirls" visible in Defendant's products are evidence that they are made by the claimed process (Compl. ¶81).

U.S. Patent No. 10,843,977 - "Method and Apparatus for Forming Engineered Stone"

  • Patent Identification: U.S. Patent No. 10,843,977, "Method and Apparatus for Forming Engineered Stone," issued November 24, 2020 (’977 Patent). (Compl. ¶23).
  • Technology Synopsis: This patent also addresses creating random color patterns and veining (’977 Patent, col. 1:50-53). The claimed method involves layering different types of composite material while simultaneously disrupting them with a member, then compressing the layered material, and finally disrupting the compressed material to form randomly re-oriented fragments (’977 Patent, Abstract).
  • Asserted Claims: At least independent method claim 1 is asserted (Compl. ¶¶88-89).
  • Accused Features: As with the ’806 Patent, the infringement allegation is based on the assertion that the "swirls" in the final products are indicative of the patented manufacturing process (Compl. ¶94).

U.S. Patent No. 9,707,698 - "Method and Apparatus for Forming Marbelized Engineered Stone"

  • Patent Identification: U.S. Patent No. 9,707,698, "Method and Apparatus for Forming Marbelized Engineered Stone," issued July 18, 2017 (’698 Patent). (Compl. ¶25).
  • Technology Synopsis: The patent discloses a method for creating marbleized engineered stone by supplying a first material to a conveyor belt, supplying a second material on top of the first, compressing the combination, stirring the compressed combination to form a "first modified combination," and then compressing it again (’698 Patent, Abstract).
  • Asserted Claims: At least independent method claim 8 is asserted (Compl. ¶¶99-101).
  • Accused Features: The infringement allegation is again premised on the "shape, nature and overall appearance of the 'swirls' in the product" being evidence of the use of the claimed method (Compl. ¶108).

III. The Accused Instrumentality

  • Product Identification: The accused instrumentalities are "Cambria engineered natural quartz surface products" identified in Exhibit 6 to the complaint, which are alleged to be made by infringing processes (Compl. ¶27).
  • Functionality and Market Context: The complaint alleges that the accused products are manufactured, used, sold, and imported by Defendant (Compl. ¶6). The infringement allegations are based on the methods used to create the products' aesthetic features. The complaint infers the use of the patented processes by analyzing the appearance of the final products, such as the presence of "partial longitudinal vein[s]" and "swirls" (Compl. ¶¶51, 81). To support its allegations for the ’516 Patent, the complaint provides a diagram from Defendant's own patent, U.S. Patent No. 9,993,942, to illustrate a mold allegedly used in the infringing process (Compl. ¶48). This diagram from Cambria's patent shows a mold with an upwardly facing opening for receiving particulate mineral mixes (Compl. ¶48).

IV. Analysis of Infringement Allegations

U.S. Patent No. 9,511,516 Infringement Allegations

Claim Element (from Independent Claim 14) Alleged Infringing Functionality Complaint Citation Patent Citation
supplying a first mixture of quartz and resin to an inner chamber of a mold; On information and belief, the accused products are made by supplying a quartz and resin mixture into a mold. This is supported by Cambria's own '942 patent, which describes dispensing quartz material into a mold. ¶46, ¶47 col. 2:58-61
wherein the mold has a top opening which leads to the inner chamber, and the mold includes a first wall, a second wall, a third wall, and a fourth wall, and a bottom which enclose the inner chamber... The accused products are allegedly made with a mold having this structure. The complaint cites Cambria's '942 patent, which describes a mold with an "upwardly facing opening 132." ¶48 col. 11:65-12:3
using a computer processor to controllably supply the first mixture to the inner chamber of the mold through a first region of the top opening but not through a second region of the top opening during a first state... On information and belief, a computer processor is used to perform this controlled supply, as evidenced by the final product including a "first partial vein" that extends over a first portion but not a second portion of the slab. ¶49 col. 12:4-12
using the computer processor to controllably supply the first mixture to the inner chamber of the mold through the second region of the top opening, but not through the first region of the top opening during a second state. On information and belief, this step is also performed, as evidenced by the final product including a "second partial vein" that extends over a second portion but not the first portion of the slab. ¶50 col. 12:12-18

U.S. Patent No. 10,376,912 Infringement Allegations

Claim Element (from Independent Claim 11) Alleged Infringing Functionality Complaint Citation Patent Citation
causing a first portion of a slab to move vertically out of alignment with an area of the slab surrounding the first portion of the slab and thereby introducing a first crack...by using a first device located between the first portion and a ground surface... On information and belief, the accused products are made by a process that includes pushing a portion of an uncured slab out of alignment to create cracks, based on an analysis of the "directionally random" nature of the cracks in the final products. ¶62, ¶66, ¶67 col. 4:1-9
depositing a first material having a color into the first crack of the slab, so that the first crack deposited with the first material becomes a vein having the color of the first material; On information and belief, a coloring material is deposited into the created cracks, as evidenced by the "contrasting crack in the finished product." ¶63, ¶66 col. 4:9-14
causing the first crack to close and the first portion of the slab to move vertically back into alignment...by no longer applying the force to the first portion of the slab after the first material is deposited into the first crack... On information and belief, the process includes this step, which is inferred by the inventor's analysis of the final product's appearance. ¶64 col. 15:48-56
wherein the slab is a damp particulate mixture. On information and belief, the slab being processed is in the form of a damp particulate mixture, which is a common state for uncured engineered stone. ¶65 col. 15:57-58
  • Identified Points of Contention:
    • Evidentiary Gap (Process vs. Product): For all asserted patents, which claim manufacturing methods, the complaint bases its infringement allegations on "information and belief" and an analysis of the final products' aesthetic characteristics ("swirls," "veins," "cracks"). A primary point of contention will be whether the appearance of the finished product is sufficient evidence to prove that it was made by the specific, multi-step processes recited in the claims.
    • Scope Questions: The infringement allegations for the '516 Patent rely in part on Defendant's own patent ('942). A question will be whether the process described in the '942 patent actually falls within the scope of the claims of the '516 Patent, or if there are material differences.

V. Key Claim Terms for Construction

For the ’516 Patent:

  • The Term: "controllably supply" (Claim 14)
  • Context and Importance: This term is critical because the invention is not merely about supplying a mixture, but about doing so in a targeted, sequential manner ("first region... first state," "second region... second state") directed by a computer processor. The definition of "controllably" will determine the level of precision and type of computer direction required to infringe.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification describes a "computer processor which communicates with the first device to control how much of the first mixture of quartz and resin is supplied" and where it is supplied (’516 Patent, col. 2:58-67). This general language could support a broad meaning covering any computer-directed supply process that achieves the regional deposition.
    • Evidence for a Narrower Interpretation: The figures and detailed description depict specific embodiments using hoppers, valves, and conveyor belts to achieve the supply (’516 Patent, Fig. 1; col. 5:10-24). A party could argue that "controllably supply" should be construed in light of these specific mechanisms, requiring more than just general computer oversight.

For the ’912 Patent:

  • The Term: "a damp particulate mixture" (Claim 11)
  • Context and Importance: This term defines the physical state of the slab when it is cracked. The material properties implied by this term—its ability to fracture cleanly when force is applied and then close when the force is removed—are fundamental to the claimed method. Practitioners may focus on this term because the feasibility of the entire cracking-and-filling process depends on the slab having the correct consistency.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent uses the phrase generally, stating in the background that initial materials form a "slightly damp mixture" and are processed into a "damp 'slab'" (’912 Patent, col. 1:50-55). This suggests it aligns with a term of art for uncured engineered stone.
    • Evidence for a Narrower Interpretation: The abstract and summary describe the slab as being in a "soft, damp, slightly pressed state" (’912 Patent, Abstract; col. 2:11-12). A party may argue that the term should be limited to require all three characteristics (softness, dampness, and being slightly pressed), as this specific state may be what enables the claimed cracking effect.

VI. Other Allegations

  • Indirect Infringement: For each patent, the complaint alleges infringement under 35 U.S.C. § 271(g), which prohibits the importation, sale, or use of a product made by a process patented in the United States (Compl. ¶¶44, 60, 74, 88, 100). The allegations focus on Defendant's direct liability for making, using, and selling products created by an infringing process.
  • Willful Infringement: The complaint alleges willful infringement for all five patents, asserting that Defendant had pre-suit knowledge. For the ’516 and ’698 Patents, knowledge is alleged as of February 2018 (Compl. ¶33). For the ’912, ’806, and ’977 Patents, knowledge is alleged as of December 2021, arising from license requests made during settlement talks in a separate litigation (Compl. ¶35). The allegation is further supported by the claim that Defendant itself relied on the ’516 Patent in a prior lawsuit it filed against a third party (Compl. ¶34).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A central issue will be one of process inference from product form: Since all asserted patents claim manufacturing methods, can Plaintiff meet its burden of proof by relying on the visual characteristics of the accused finished products (e.g., "swirls," "cracks") to infer that Defendant used the specific, multi-step processes recited in the claims?
  • A key question will be the impact of the parties' litigation history: The complaint alleges that Defendant knew of the patents-in-suit, attempted to license them, and even used the ’516 Patent as a basis for its own infringement allegations against a third party. The extent to which this history demonstrates knowledge and intent will be a critical factor in the analysis of willful infringement.
  • The case may also turn on a question of technical distinction: For the patents related to creating "swirls" and marbleized patterns (’806, ’977, ’698), a key factual dispute will likely be whether the methods claimed in each patent are technically distinct from one another and from other known methods, and whether the visual evidence in the accused products can be uniquely tied to one specific patented process over another.