DCT
5:22-cv-00015
Terracino v. Trimaco Inc
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Robert Terracino and Bradie Terracino (Virginia)
- Defendant: Trimaco, Inc. (Ohio, with principal office in North Carolina), Charles Cobaugh, and David C. May
- Plaintiff’s Counsel: Williams Mullen; Patten, Wornom, Hatten & Diamonstein
- Case Identification: 5:22-cv-00015, E.D.N.C., 04/18/2022
- Venue Allegations: Venue is based on Defendant Trimaco’s principal office and corporate headquarters being located in Morrisville, North Carolina, and on allegations that key acts of infringement, misrepresentation, and trade secret misappropriation occurred within the district.
- Core Dispute: Plaintiffs allege that Defendants’ “Stay Put” line of drop cloths infringes a patent related to non-skid protective fabrics, in addition to claims of trade secret misappropriation, fraud, and breach of a prior license agreement.
- Technical Context: The technology concerns protective coverings, such as painter's drop cloths, designed with a high-friction backing to prevent slipping, addressing safety and stability issues common in the painting and maintenance industries.
- Key Procedural History: The complaint details a history of business dealings, including a patent license agreement between the parties that was later terminated by the Defendant. Plaintiffs allege that during this relationship, Defendants filed their own patent applications on what was allegedly the Plaintiffs' invention without proper attribution, a fact pattern that underlies claims of willfulness, fraud, and trade secret misappropriation.
Case Timeline
| Date | Event |
|---|---|
| 2009-07-27 | Priority Date for U.S. Patent No. 9,044,917 |
| 2015-06-02 | U.S. Patent No. 9,044,917 Issued |
| 2015-06-18 | Plaintiffs and Defendants begin confidential discussions |
| 2015-11-02 | Defendants file '806 Provisional Patent Application |
| 2016-02-10 | Plaintiffs and Defendants ratify License Agreement |
| 2016-11-02 | Defendants file PCT Application |
| 2018-06-25 | License Agreement assigned to 2300 Gateway, Inc. |
| 2020-06-16 | Defendants' U.S. Patent No. 10,683,607 issues |
| 2021-02-10 | Defendants give notice of intent to terminate Agreement |
| 2022-04-18 | First Amended Complaint filed |
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 common and serious problem where conventional protective drop cloths slip and slide on surfaces like floors or stairs, creating a safety hazard that can lead to falls and serious injury (ʼ917 Patent, col. 2:26-34).
- The Patented Solution: The invention is a two-layer protective cloth designed to solve the slippage problem. It combines a "single, absorbent, plain woven upper layer," like canvas, with a "single lower, resilient layer" that features a "network of downward projecting bumps" of varying sizes connected by a grid (ʼ917 Patent, Abstract; col. 5:23-62). The two layers are stitched together, and the specific structure of the lower layer is designed to create a high coefficient of friction, thereby holding the cloth in place during use (ʼ917 Patent, col. 5:43-44; col. 8:54-58).
- Technical Importance: The invention provides a quantifiable solution to the slippage problem by specifying a structure that achieves a Sliding Coefficient of Friction greater than approximately 0.75 when measured by a specific industry standard (TAPPI T548), offering a measurable improvement in safety and performance over prior art (ʼ917 Patent, col. 4:50-54).
Key Claims at a Glance:
- The complaint asserts independent Claim 1 (Compl. ¶63, 112).
- Claim 1 recites a non-skid protective cloth or pad consisting of:
- A single, absorbent, plain woven upper layer.
- A single lower, resilient layer comprising a network of downward projecting bumps interconnected by a resilient grid.
- The downward projecting bumps have at least two different circumferential sizes.
- The height of the bumps with the smaller circumferential size is greater than the height of the bumps with the larger circumferential size.
- Stitching is disposed through both the upper and lower layers.
- A resulting Sliding Coefficient of Friction, measured per TAPPI T548, is greater than approximately 0.75.
III. The Accused Instrumentality
- Product Identification: The accused products are Defendant’s “Stay Put” and “Stay Put Plus” drop cloths (Compl. ¶112).
- Functionality and Market Context: The complaint describes the accused products as drop cloths used for surface protection (Compl. ¶5). Two versions are identified: a “Stay Put Canvas with a canvas layer and a surface grip layer” and a “Stay Put Canvas Plus” which adds a “liquid barrier component” (Compl. ¶61). Plaintiffs allege these products are widely available through major retailers such as Home Depot, Lowe's, and Amazon.com, suggesting significant commercial activity (Compl. ¶62).
IV. Analysis of Infringement Allegations
’917 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a) a single, absorbent, plain woven upper layer free from any projecting cut pile and having an upper and a lower major surface | The accused products allegedly include a "canvas layer" which is a type of plain woven, absorbent material (Compl. ¶61). | ¶63(b) | col. 5:23-28 |
| b) a single lower, resilient layer... comprising a network of downward projecting bumps interconnected one to another by a resilient grid... | The accused products are alleged to have a "surface grip layer" that corresponds to the claimed lower resilient layer with projecting bumps (Compl. ¶61). | ¶63(c) | col. 5:42-43 |
| said downward projecting bumps comprising bumps having at least two different circumferential sizes... | The complaint makes a blanket allegation that the accused products meet this limitation (Compl. ¶63). | ¶63(c) | col. 5:55-56 |
| 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 complaint alleges the accused products meet this specific geometric relationship between bump height and size (Compl. ¶63). | ¶63(d) | col. 5:57-62 |
| e) stitching disposed through both said single, absorbent, upper, woven layer and said single lower resilient layer | The complaint alleges that the infringing products are "manufactured and sold with stitching" (Compl. ¶58). | ¶63(e) | col. 5:43-44 |
| 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 complaint alleges the accused products meet this functional performance requirement (Compl. ¶63). | ¶63(e) | col. 8:54-58 |
- Identified Points of Contention:
- Scope Questions: The complaint alleges the "Stay Put Canvas Plus" product infringes, yet describes it as having an additional "liquid barrier component" (Compl. ¶61). This raises the question of whether a three-component product can meet the "a single... upper layer" and "a single lower... layer" limitations of Claim 1. The interpretation of "single" will be critical.
- Technical Questions: A highly specific limitation requires that the smaller-circumference bumps be taller than the larger-circumference bumps. The complaint alleges this is met but provides no measurements or evidence (Compl. ¶63(d)). A central factual dispute will likely be whether the accused products actually possess this counter-intuitive geometric structure. A second technical question is whether the accused products, when tested, actually achieve the functional requirement of a Sliding Coefficient of Friction greater than 0.75 as specified in the claim (Compl. ¶63(e)).
No probative visual evidence provided in complaint.
V. Key Claim Terms for Construction
The Term: "a single... upper layer" and "a single lower, resilient layer"
- Context and Importance: The "Stay Put Canvas Plus" product is alleged to incorporate a "liquid barrier component" in addition to a canvas layer and grip layer (Compl. ¶61). The definition of "single" will determine whether this multi-component product can literally infringe a claim reciting two "single" layers.
- Intrinsic Evidence for a Broader Interpretation: A party could argue "single" distinguishes the claimed structure from multi-ply quilted pads and that an integrated, thin barrier does not negate the primary function of the single absorbent layer or single resilient layer.
- Intrinsic Evidence for a Narrower Interpretation: The patent discloses a three-layer embodiment with an "interposed impervious member" as an alternative (ʼ917 Patent, Fig. 3, col. 6:59-62). A party may argue that because Claim 1 does not recite this structure, the term "single" was deliberately chosen to limit the claim to a two-layer construction.
The Term: "height of bumps having the smaller of said at least two different circumferential sizes being greater than said height of bumps having said larger..."
- Context and Importance: This precise and unusual geometric relationship is a key limitation. Infringement will depend on precise physical measurements of the accused product, making its construction central to the dispute.
- Intrinsic Evidence for a Broader Interpretation: The specification discloses this configuration as one of several possibilities, stating in other embodiments the heights could be identical or the larger bumps could be taller (ʼ917 Patent, col. 5:57-62). A party might argue this context allows for some variation, though the claim language itself is specific.
- Intrinsic Evidence for a Narrower Interpretation: The claim language is mathematically precise and unambiguous. Practitioners may focus on the fact that the patentee explicitly chose this specific configuration out of three disclosed options to include in the claim, suggesting a deliberate and narrow scope.
The Term: "stitching"
- Context and Importance: Defendant allegedly stated its product would not infringe because it did not involve "sewing," yet the complaint alleges the accused products are in fact made with "stitching" (Compl. ¶31, ¶58). The presence and definition of "stitching" is therefore a direct point of contention.
- Intrinsic Evidence for a Broader Interpretation: The specification, while showing stitching as the typical method, notes that "methods and/or materials other than stitching may be utilized," including adhesives or other fasteners (ʼ917 Patent, col. 5:44-48). A party could argue this suggests a broader concept of "fastening."
- Intrinsic Evidence for a Narrower Interpretation: Claim 1 explicitly recites "stitching," not a broader term like "fastening." A party will argue that the plain and ordinary meaning of "stitching" requires the use of thread, and the patentee's choice to claim "stitching" specifically, despite disclosing alternatives, was a limiting decision.
VI. Other Allegations
- Indirect Infringement: The complaint does not provide sufficient detail for an analysis of indirect infringement, as its allegations focus on direct infringement through Defendant's acts of making, using, and selling the accused products (Compl. ¶112).
- Willful Infringement: The complaint alleges that Defendant’s infringement has been willful, asserting that Trimaco had "actual knowledge of the '917 Patent at all relevant times" (Compl. ¶113, ¶118). This allegation is factually supported by the detailed history of licensing negotiations between the parties that occurred after the patent issued (Compl. ¶18-34).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of structural correspondence: does the physical construction of the accused "Stay Put" drop cloths, particularly the "Plus" version, meet the "single upper layer" and "single lower layer" limitations of Claim 1? Further, can Plaintiffs prove the accused products embody the claim's highly specific and non-intuitive geometric relationship where smaller-circumference bumps are taller than larger-circumference bumps?
- A key evidentiary question will be one of factual proof: can Plaintiffs demonstrate through testing that the accused products meet the claimed functional threshold of a "Sliding Coefficient of Friction... greater than approximately 0.75"? This technical data, along with evidence confirming the use of "stitching" in the accused products, will be critical to proving literal infringement.