DCT

5:22-cv-00015

Terracino v. Trimaco Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: Robert Terracino and Bradie Terracino v. Trimaco, Inc., et al., 4:22-cv-3, E.D.N.C., 01/07/2022
  • Venue Allegations: Venue is predicated on Defendant Trimaco’s corporate headquarters and principal place of business being located within the Eastern District of North Carolina.
  • Core Dispute: Plaintiffs allege that Defendant’s "Stay Put" line of non-skid drop cloths infringes a patent covering a multi-layer protective fabric with a specific high-friction surface structure.
  • Technical Context: The technology relates to protective coverings, such as painter's drop cloths, designed to prevent slippage on surfaces like floors and stairs, thereby enhancing safety.
  • Key Procedural History: The complaint alleges a complex history between the parties, including a patent license agreement that was subsequently terminated by the Defendant. Plaintiffs also allege that Defendants used confidential information obtained during the licensing relationship to file their own patent application on a similar technology, which is the subject of a separate count for correction of inventorship.

Case Timeline

Date Event
2009-07-27 U.S. Patent No. 9,044,917 Priority Date
2015-06-02 U.S. Patent No. 9,044,917 Issue Date
2015-06-18 Plaintiffs allegedly sent samples and technical details of the invention to Defendant
2015-11-02 Defendant allegedly filed its own provisional patent application on the technology
2016-02-10 Plaintiffs and Defendant Trimaco ratified a patent license agreement
2021-02-10 Defendant Trimaco provided notice of its intent to terminate the license agreement
2022-01-07 Complaint Filing Date

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

U.S. Patent No. 9,044,917 - "NON-SKID PROTECTIVE CLOTH OR PAD," Issued June 2, 2015

The Invention Explained

  • Problem Addressed: The patent's background section identifies a safety hazard with conventional protective drop cloths, which can slip and slide on floors or stairs, potentially causing falls and serious injuries (ʼ917 Patent, col. 2:25-39). The patent also notes that terms like "non-skid" lack a standardized meaning, leaving users unable to assess a product's true performance (ʼ917 Patent, col. 4:5-12).
  • The Patented Solution: The invention is a multi-layer protective cloth designed to provide a high, quantifiable degree of slip resistance. It consists of an absorbent woven upper layer (e.g., canvas) stitched to a lower resilient layer featuring a network of downward-projecting bumps (’917 Patent, Abstract). These bumps, which are of at least two different sizes, are designed to create exceptional grip on both wet and dry surfaces, in part by maximizing Van Der Waals forces when compressed (’917 Patent, col. 6:5-12). The structure is claimed to achieve a specific static coefficient of friction greater than 0.75 when measured by a standardized industry test (’917 Patent, col. 4:49-54).
  • Technical Importance: The invention sought to provide a reliable and verifiably safe non-slip surface for protective coverings used in maintenance, painting, and other applications where slippage poses a significant risk (’917 Patent, col. 6:29-39).

Key Claims at a Glance

  • The complaint asserts infringement of at least independent Claim 1 (Compl. ¶117).
  • The essential elements of Claim 1 include:
    • A single, absorbent, plain woven upper layer.
    • A single lower, resilient layer comprising a network of downward-projecting bumps of at least two different circumferential sizes.
    • A specific geometric relationship where the height of the smaller-circumference bumps is greater than the height of the larger-circumference bumps.
    • Stitching that joins the upper and lower layers.
    • A resulting Sliding Coefficient of Friction greater than approximately 0.75, measured according to the TAPPI T548 specification.
  • The complaint does not explicitly reserve the right to assert dependent claims.

III. The Accused Instrumentality

Product Identification

  • The accused instrumentalities are Defendant Trimaco's "Stay Put" and "Stay Put Canvas Plus" drop cloths (Compl. ¶¶ 5, 62).

Functionality and Market Context

  • The complaint alleges that the accused products are non-skid drop cloths sold for surface protection (Compl. ¶5). They are described as having a canvas layer and a "surface grip layer," with the "Canvas Plus" version also including an intermediate "liquid barrier layer" (Compl. ¶62). The complaint alleges these products are "ubiquitous" and sold through major national retailers including Amazon.com, Home Depot, and Lowe's (Compl. ¶63).

IV. Analysis of Infringement Allegations

No probative visual evidence provided in complaint.

'917 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a single, absorbent, plain woven upper layer free from any projecting cut pile... The accused drop cloths include a "single, absorbent, plain woven upper layer free from any projecting cut pile." ¶64(b) col. 5:24-26
a single lower, resilient layer... comprising a network of downward projecting bumps interconnected... by a resilient grid, said... bumps comprising bumps having at least two different circumferential sizes... The accused drop cloths include a "single lower, resilient layer" with a "network of downward projecting bumps" of "at least two different circumferential sizes." ¶64(c) col. 5:53-57
said height of bumps having the smaller of said at least two different circumferential sizes being greater than said height of bumps having said larger of said at least two circumferential sizes... The accused drop cloths are alleged to possess this specific bump height geometry. ¶64(d) col. 8:43-48
stitching disposed through both said single, absorbent, upper, woven layer and said single lower resilient layer... The accused drop cloths allegedly have "stitching disposed through both" layers. ¶64(e) col. 5:41-42
whereby when said lower major surface... is placed on a support surface, a Sliding Coefficient of Friction measured in accordance with TAPPI T548 specification is greater than approximately 0.75. The accused drop cloths are alleged to achieve a Sliding Coefficient of Friction greater than 0.75 when placed on a support surface. ¶64(e) col. 8:52-58
  • Identified Points of Contention:
    • Structural Contradiction: A primary technical question arises from an apparent contradiction within the patent itself. Claim 1 requires that the smaller-circumference bumps be taller than the larger-circumference bumps. However, the patent’s detailed description, referencing Figure 1, states the opposite: "As shown in FIG. 1, larger bumps 106a are shown having a greater height than smaller bumps 106b" (’917 Patent, col. 5:58-60). This raises the question of whether the accused product can infringe a claim that is contradicted by the patent’s only disclosed embodiment, and it may also give rise to a defense of invalidity based on a lack of written description for the claimed configuration.
    • Functional Limitation: The "whereby" clause requiring a Sliding Coefficient of Friction greater than 0.75 is a performance-based limitation. This raises an evidentiary question: what evidence demonstrates that the accused products actually meet this specific numerical threshold when tested according to the TAPPI T548 standard cited in the patent?

V. Key Claim Terms for Construction

  • The Term: "said height of bumps having the smaller of said at least two different circumferential sizes being greater than said height of bumps having said larger of said at least two circumferential sizes"

    • Context and Importance: The construction of this entire phrase will be dispositive for infringement. Practitioners may focus on this term because it creates a direct conflict between the claim language and the explicit teaching of the patent’s preferred embodiment. The defendant may argue that its product, if it follows the patent’s description (taller large bumps), cannot infringe the claim as written.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation (i.e., enforcing the claim as written): The language of the claim itself is unambiguous and is presumptively controlling under principles of claim construction.
      • Evidence for a Narrower Interpretation (or invalidity): The specification explicitly teaches the opposite configuration: "larger bumps 106a are shown having a greater height than smaller bumps 106b" (’917 Patent, col. 5:58-60). A court may view this as a significant discrepancy that either limits the claim's scope to what was described or renders it invalid for lacking adequate written descriptive support.

  • The Term: "a Sliding Coefficient of Friction... is greater than approximately 0.75"

    • Context and Importance: This term defines the invention by its functional result. Practitioners may focus on this term because infringement requires not only meeting the structural limitations but also proving that the structure achieves this specific, measurable performance.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The term "approximately" suggests some flexibility around the 0.75 value.
      • Evidence for a Narrower Interpretation: The patent provides a precise test for measuring this value ("TAPPI T548 specification") and includes test results for a sample embodiment, showing an average Static Coefficient of Friction of 0.9 (’917 Patent, col. 7:1-49; Fig. 5). This provides a clear, objective standard against which the accused product's performance can be judged.

VI. Other Allegations

  • Willful Infringement: The complaint alleges that Defendant’s infringement was and is willful (Compl. ¶119). This allegation is based on alleged pre-suit, actual knowledge of the ’917 Patent arising from the parties' prior business relationship, which included extended license negotiations specifically concerning the patented technology (Compl. ¶¶ 21, 30, 34, 37, 118).

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

The resolution of this case may depend on the court’s determination of the following key questions:

  • A central issue will be one of claim validity and scope in light of internal contradiction: Can Claim 1 be enforced as written—requiring smaller bumps to be taller—when the patent’s sole embodiment described in the specification teaches the exact opposite geometry? This question implicates fundamental principles of claim construction and the written description requirement of patent law.

  • A key evidentiary question will be one of functional performance: Can Plaintiffs produce empirical evidence, based on the specific TAPPI T548 test protocol, to prove that the accused "Stay Put" products actually achieve the "Sliding Coefficient of Friction...greater than approximately 0.75" required by the claim?