DCT
1:23-cv-00059
Fods LLC v. Low Impact Tech USA Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Fods, LLC (Colorado)
- Defendant: Low Impact Technologies USA, Inc. (North Carolina) and D&D Manufacturing, LLC (Florida)
- Plaintiff’s Counsel: Kilpatrick Townsend & Stockton LLP
- Case Identification: 1:23-cv-00059, W.D.N.C., 03/08/2023
- Venue Allegations: Venue is alleged to be proper in the Western District of North Carolina because Defendant Low Impact Technologies USA is incorporated there, and Defendant D&D Manufacturing maintains a place of business and has agents within the district where a substantial part of the events giving rise to the claims occurred.
- Core Dispute: Plaintiff alleges that Defendants’ trackout control mats infringe a patent for a vehicle tracking pad, and further brings claims for trade dress infringement, breach of contract, and misappropriation of trade secrets stemming from a prior manufacturing relationship between the parties.
- Technical Context: The technology concerns modular, reusable mats with textured surfaces designed to remove mud and debris from vehicle tires at construction sites, industrial areas, and other off-road locations to prevent "trackout" onto public roadways.
- Key Procedural History: The complaint alleges that Defendant D&D Manufacturing previously manufactured Plaintiff's patented product under 2016 and 2018 agreements that included confidentiality and intellectual property provisions. The complaint further alleges that the principal of D&D is now the chairman of Defendant Low Impact Technologies, which launched the accused competing product. This prior relationship forms the basis for allegations of willful infringement and misappropriation of trade secrets.
Case Timeline
| Date | Event |
|---|---|
| 2010-05-14 | ’927 Patent Priority Date |
| 2011-11-22 | ’927 Patent Issue Date |
| 2016-04 | Plaintiff FODS and Defendant D&D enter manufacturing agreement |
| 2016-07 | Plaintiff FODS launches its FODS Mats product |
| 2018-04 | Plaintiff FODS and Defendant D&D enter new manufacturing agreement |
| 2020-11 | Defendant Low Impact Technologies USA, Inc. (LIT) incorporates |
| 2023-01 | Defendants begin marketing the accused "TOMS Mat" |
| 2023-01-21 | Defendant LIT allegedly admits awareness of the '927 Patent |
| 2023-03-08 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,061,927 - “VEHICLE TRACKING PAD”
- Patent Identification: U.S. Patent No. 8,061,927 (“the ’927 Patent”), “VEHICLE TRACKING PAD,” issued November 22, 2011. (Compl. ¶22).
The Invention Explained
- Problem Addressed: The patent’s background section describes the problem of construction vehicles tracking mud and dirt from a worksite onto public roads, known as "trackout." It notes that conventional solutions like gravel pads are often ineffective, require constant maintenance, and can be pressed into the underlying mud, while mechanical "wheel shakers" and "wheel washers" are costly and complex to install and operate (’927 Patent, col. 1:16 - col. 2:54).
- The Patented Solution: The invention is a reusable, modular, and flexible mat with an array of "upstanding structures" on its top surface. As a vehicle drives over the mat, these structures are configured to "locally deform a tire," which dislodges caked-on mud and debris. The mats can be interlocked to form a temporary roadway of a desired length, adapting to irregular ground surfaces (’927 Patent, Abstract; col. 3:21-36).
- Technical Importance: The patented technology offers a portable and reusable system intended to provide a more durable and effective solution for controlling construction site trackout compared to disposable gravel beds or expensive, fixed washing stations (’927 Patent, col. 2:46-54).
Key Claims at a Glance
- The complaint asserts infringement of at least independent claim 1 (Compl. ¶102).
- The essential elements of Claim 1 are:
- A mat body in a regular geometric shape with a predetermined length, with edges suited for mating with other mats to form a longer egress path.
- The mat is formed of a flexible material that can accommodate an irregular ground surface.
- A finish on the top surface defines a plurality of spaced apart, upstanding structures.
- These structures are configured to "locally deform a tire" to remove mud as vehicles roll over them.
- At least some of these upstanding structures have a height "in the range from four to six inches."
III. The Accused Instrumentality
Product Identification
The accused product is the “Tread On Me” trackout mat, also marketed as the “TOMS Mat” (Compl. ¶72).
Functionality and Market Context
- The accused product is described as a trackout system made of high-density polyethylene (HDPE) and composed of individual mat sections that can be interlocked (Compl. ¶103).
- Its top surface features an array of "raised scalloped pyramids" which are alleged to remove mud from tires by deforming them at the point of contact (Compl. ¶107). This functionality is shown in a complaint image depicting a tire pressing down onto the pyramids of the accused mat (Compl. p. 25).
- The complaint alleges the product is a direct competitor, marketed to Plaintiff's customers as a "replacement" for and "basically identical" to the Plaintiff's own FODS Mats (Compl. ¶¶84, 88).
IV. Analysis of Infringement Allegations
’927 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a mat body configured in a regular geometric shape of predetermined length... | The accused product is a rectangular-shaped mat with a predetermined length of approximately seven feet. An annotated image depicts this rectangular shape (Compl. p. 23). | ¶104 | col. 5:11-13 |
| ...suited for mating with like mat bodies when arranged in a series therewith to establish an egress path of greater length than said predetermined length... | The accused product can be mated with additional mats to create a trackout path longer than an individual mat. An annotated photograph shows two mats joined to form a longer "egress path" (Compl. p. 24). | ¶105 | col. 6:33-35 |
| ...formed of flexible material accommodating irregular ground surface... | The accused product is made of HDPE, which the complaint alleges is flexible and capable of adapting to the contours of the ground. | ¶106 | col. 5:2-5 |
| ...a finish on said top surface...defining a plurality of...upstanding structures configured to locally deform a tire for removing mud... | The accused product’s top surface has an array of "raised scalloped pyramids" that are alleged to remove mud by deforming the tire at the point of contact with the cone. | ¶107 | col. 8:12-14 |
| ...wherein at least some of said upstanding structures have a height in the range from four to six inches. | The complaint alleges that the accused product's pyramids are "at least equivalents" of the claimed structures and directly infringe "under the doctrine of equivalents." | ¶107 | col. 7:40-43 |
Identified Points of Contention
- Scope Questions: The complaint explicitly pleads infringement of the height limitation under the doctrine of equivalents rather than literal infringement. This raises the critical question of whether the accused product's pyramids, which are implicitly alleged to be shorter than four inches, perform substantially the same function, in substantially the same way, to achieve substantially the same result as the claimed 4-to-6-inch structures.
- Technical Questions: The case will likely involve factual disputes over the functional importance of the 4-to-6-inch height range. A key technical question is whether the "local deformation" of a tire caused by the accused product's shorter pyramids is functionally equivalent to the deformation caused by the taller structures required by the claim language. The patent’s prosecution history may become central to determine if the patentee surrendered claim scope covering shorter structures, which could create an estoppel against the doctrine of equivalents argument.
V. Key Claim Terms for Construction
Term for Construction: "height in the range from four to six inches"
Context and Importance: This term is the clear point of dispute for literal infringement and is central to the doctrine of equivalents analysis. The patentability of the invention may have depended on this specific dimensional limitation to distinguish it from prior art. Practitioners may focus on this term because the plaintiff's decision to plead only equivalence, and not literal infringement, suggests the accused product does not meet this limitation, making prosecution history estoppel a likely defense.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party arguing for flexibility might point to language in the specification describing heights in this range as merely "suitable" or "approximate," suggesting the numbers are not a rigid boundary for the invention's function (’927 Patent, col. 7:42, 7:62).
- Evidence for a Narrower Interpretation: A party arguing for a strict reading would emphasize the clear recitation of a numeric range in the claim itself. The choice of specific numbers, rather than a more general functional description, suggests the patentee intended to be bound by this precise limitation.
Term for Construction: "upstanding structures configured to locally deform a tire"
Context and Importance: This term defines both the required structure and its function. Its construction is critical for determining whether the accused "scalloped pyramids" are equivalent to the structures envisioned by the patent, particularly for the "substantially the same way" prong of the equivalents test.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification provides a list of examples, including "cylinders, pyramids, rock shapes, ribs, and combinations thereof," suggesting the term is meant to be representative, not exhaustive, and should cover any shape that performs the claimed deforming function (’927 Patent, col. 4:36-39).
- Evidence for a Narrower Interpretation: A party could argue that the term should be limited by the disclosed examples and that the specific function of "local deformation" is achieved in a particular way by those shapes, which may differ from the way the accused "scalloped pyramids" function.
VI. Other Allegations
Indirect Infringement
The complaint alleges inducement of infringement, stating that Defendants instruct customers on how to use the accused mats in an infringing manner (Compl. ¶109). As evidence, the complaint provides a diagram from Defendants' materials that allegedly shows customers how to assemble multiple mats to create an infringing trackout system (Compl. p. 28).
Willful Infringement
Willfulness is alleged based on both pre- and post-suit knowledge of the ’927 Patent. The complaint alleges that Defendant D&D had knowledge through its prior manufacturing agreements with FODS, and that this knowledge is imputed to Defendant LIT through its chairman, Dale Polk Jr., who was also the principal of D&D (Compl. ¶¶76-77). The complaint also alleges that LIT admitted awareness in a cease-and-desist letter response prior to the lawsuit (Compl. ¶75).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of equivalence and estoppel: Can Plaintiff prove that the accused product's pyramids, which are alleged to fall outside the literal 4-to-6-inch height range of Claim 1, are nonetheless infringing under the doctrine of equivalents? This question will likely be countered by a defense of prosecution history estoppel, focusing on whether the patentee surrendered claim scope over shorter structures during the patent’s examination.
- A second central issue involves misappropriation and prior relationships: Beyond patent law, the case will turn on whether Defendants improperly used confidential information and trade secrets (such as manufacturing processes, customer lists, or design know-how) acquired during their prior manufacturing relationship with the Plaintiff to develop and market a competing product, as alleged in the breach of contract and trade secret claims.
- A key evidentiary question will be one of causation and damages: Given the multiple overlapping legal theories (patent infringement, trade dress, trade secret, contract), if liability is found, the court will face the complex task of apportioning damages. The analysis will need to distinguish the harm caused specifically by the patent infringement from the harm allegedly caused by the copied trade dress, the use of confidential information, and the breach of prior agreements.