DCT
3:23-cv-00245
Somero Enterprises Inc v. Twintec USA Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Somero Enterprises, Inc. (Delaware)
- Defendant: Topp & Screed S.A. (Luxembourg); Industrial Floor Consulting, Inc. (North Carolina)
- Plaintiff’s Counsel: Honigman LLP; MAYNARD NEXSEN LLP
- Case Identification: 3:23-cv-00245, W.D.N.C., 08/28/2023
- Venue Allegations: Venue is alleged to be proper for Industrial Floor Consulting, Inc. as a resident of the district. For Topp & Screed S.A., a foreign corporation, venue is alleged to be proper because no other U.S. district is available and the court has personal jurisdiction over the defendant.
- Core Dispute: Plaintiff alleges that Defendants’ TS6100e concrete screed infringes a patent related to wheeled, laser-guided concrete screeding devices.
- Technical Context: The technology relates to automated machines for leveling uncured concrete, a critical process in large-scale commercial and industrial construction for creating flat and level floor slabs.
- Key Procedural History: The complaint is a First Amended Complaint, filed to add Industrial Floor Consulting, Inc. as a defendant and dismiss a prior defendant. The complaint references pre-suit correspondence beginning January 13, 2023, which provided actual notice of the patent. Subsequent to the filing of this complaint, an Inter Partes Review (IPR) proceeding (IPR2024-00051) was initiated against the patent-in-suit. An IPR Certificate included with the patent documents indicates that as a result of this proceeding, claims 1-15 of the patent, which includes the only claim asserted in the complaint, are cancelled.
Case Timeline
| Date | Event |
|---|---|
| 2004-07-26 | ’366 Patent Priority Date |
| 2011-10-18 | '366 Patent Issue Date |
| 2017-12-01 | Alleged start of constructive notice via patent marking |
| 2020-12-03 | Accused TS6100e Product Announcement |
| 2022-12-26 | Alleged import of an accused product by Defendant IFC |
| 2023-01-13 | Plaintiff sends actual notice letter to Defendant Topp & Screed |
| 2023-01-23 | Alleged public exhibition of accused product at tradeshow |
| 2023-04-26 | Original Complaint Filing Date |
| 2023-08-28 | First Amended Complaint Filing Date |
| 2023-10-24 | IPR2024-00051 Filed against '366 Patent |
| 2025-03-03 | IPR Certificate Issue Date stating claims 1-15 cancelled |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,038,366 - "Wheeled Concrete Screeding Device"
The Invention Explained
- Problem Addressed: The patent describes the considerable manual labor, cost, and time required to spread and level uncured concrete, particularly in areas where larger, automated screeding machines cannot be used (’366 Patent, col. 1:35-52).
- The Patented Solution: The invention is a wheeled, walk-behind screeding apparatus designed to automate this process. It features a "screed head" that follows the wheeled unit through the uncured concrete. This head includes a "grade establishing element" (e.g., a plow) that is vertically adjusted by a laser-guidance system to create an initial level surface, and a separate "vibratable member" that is adjustably attached behind the plow and "floats" on this freshly leveled concrete to compact and finish it (’366 Patent, Abstract; col. 2:56-65).
- Technical Importance: The technology aims to bring the benefits of automated, laser-guided precision to smaller-scale concrete jobs, reducing the need for intensive manual labor and improving the accuracy of the finished surface (’366 Patent, col. 1:53-57).
Key Claims at a Glance
- The complaint asserts independent claim 1 (’366 Patent, col. 25:11-34).
- The essential elements of independent claim 1 are:
- A wheeled unit with at least two wheels supporting a frame, movable through uncured concrete.
- A screed head supported at the rearward end of the frame, following the wheeled unit.
- The screed head comprises a grade establishing element and a vibratable member.
- The grade establishing element is vertically adjustable in response to a signal from a laser receiver to create a "struck-off surface" at a desired grade.
- The vibratable member is adjustably attached to the rear of the grade establishing element.
- The vibratable member "at least partially floats" behind the grade establishing element on the "struck-off surface" of the uncured concrete.
- The complaint reserves the right to assert additional claims upon discovery (Compl. ¶37, ¶49).
III. The Accused Instrumentality
Product Identification
- The Topp & Screed TS6100e concrete screed (Compl. ¶20).
Functionality and Market Context
- The TS6100e is described as a "fully electric, battery powered Mini Superflat Screed" equipped with an "automatic laser control system" (Compl. ¶38, pp. 9, 12). The complaint alleges the device is wheeled and designed for leveling uncured concrete, particularly in industrial settings or where space is limited (Compl. ¶38, p. 9).
- Plaintiff alleges that Defendant Topp & Screed designs, manufactures, and sells the device, while Defendant IFC imports, uses, offers for sale, and/or sells the device in the United States (Compl. ¶19, ¶33, ¶47-48). The device is marketed as a "WORLD FIRST" for its category (Compl. ¶38, p. 9).
IV. Analysis of Infringement Allegations
'366 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a wheeled unit having at least two wheels for movably supporting a frame portion of said wheeled unit... wherein said wheeled unit is movable through uncured concrete in a screeding direction; | The TS6100e is a wheeled unit with a frame and at least two wheels, and is movable through uncured concrete. A photograph in the complaint shows the wheeled unit. (Compl. ¶38, p. 11). | ¶38 | col. 25:12-18 |
| a screed head supported at said rearward end of said frame portion and following behind said wheeled unit... said screed head comprising a grade establishing element and a vibratable member; | The TS6100e has a screed head supported at the rear of its frame, which comprises a grade establishing element and a vibratable member. A photograph depicts this assembly. (Compl. ¶38, p. 11). | ¶38 | col. 25:19-22 |
| wherein said grade establishing element is generally vertically adjustable responsive to a signal from a laser receiver disposed at said screed head to establish a struck-off surface of the uncured concrete at a desired grade... | The TS6100e is alleged to have a grade establishing element that is vertically adjustable via an "Automatic laser control system" responsive to a laser receiver. A product data sheet depicts the laser receiver masts on the machine. (Compl. ¶38, p. 12). | ¶38 | col. 25:23-29 |
| wherein said vibratable member is adjustably attached at a rearward end of said grade establishing element and wherein said vibratable member at least partially floats behind said grade establishing element on the struck-off surface of the uncured concrete... | The TS6100e is alleged to have a vibratable member attached at the rear of its grade establishing element that floats on and is supported by the struck-off surface of the uncured concrete. A photograph shows the member's position. (Compl. ¶38, p. 13). | ¶38 | col. 25:30-34 |
- Identified Points of Contention:
- Scope Questions: The complaint's allegations rely on photographs and marketing materials. This raises the question of whether the accused device’s actual operation precisely maps to the claimed sequence of functions, particularly the creation of a "struck-off surface" by the grade establishing element and the subsequent "floating" of the vibratable member on that specific surface.
- Technical Questions: A key technical question is what evidence demonstrates that the TS6100e's vibratable member "at least partially floats" as required by the claim. This term implies a specific physical interaction (partial support by the semi-liquid concrete) that may be distinct from simply being positioned behind the grade element on a fixed or articulated mount.
V. Key Claim Terms for Construction
The Term: "at least partially floats"
Context and Importance: This term is critical as it defines the specific physical behavior and relationship between the vibratable member and the uncured concrete. The infringement analysis will depend heavily on whether the accused product's vibrator can be shown to "float" in the manner claimed, rather than being merely positioned or dragged. Practitioners may focus on this term because it appears to be a key point of novelty distinguishing the invention from prior art where components might be rigidly fixed.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The abstract states the vibratable member is "at least partially supported at the struck-off surface of the uncured concrete" (’366 Patent, Abstract), suggesting the core concept is support by the concrete itself, which could be interpreted broadly.
- Evidence for a Narrower Interpretation: The specification notes that because the attachment links are pivotal, the "vibrating member may freely float relative to the plow and thus may rest on the forms" (’366 Patent, col. 13:12-14). This linkage to "freely float" could be used to argue for a narrower construction requiring a high degree of unconstrained vertical movement that is primarily dictated by the surface it rests on.
The Term: "grade establishing element"
Context and Importance: This term defines the component responsible for the initial leveling action. Its scope will determine whether the claim reads on a variety of leveling technologies or is limited to the specific types shown in the patent.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claims use the functional term "grade establishing element." The specification refers to this component as a "plow member" (col. 25:37) or a "strike-off member or plow" (col. 5:17-18), suggesting it could encompass different structures that perform the striking-off function.
- Evidence for a Narrower Interpretation: The preferred embodiments consistently depict a blade-like "plow" (e.g., FIG. 1, 18a/18b) or an "auger" (col. 25:40-41). A party could argue the term should be limited to these disclosed structures, rather than any component that levels concrete.
VI. Other Allegations
- Willful Infringement: The complaint alleges willfulness based on both constructive and actual notice. It alleges constructive notice since December 2017 through Somero's patent marking program (Compl. ¶22-24). It further alleges that actual notice was provided to Topp & Screed via a letter dated January 13, 2023, and that Defendants continued to infringe after receiving this notice, including by exhibiting the accused product at a trade show (Compl. ¶25, ¶27-28, ¶41-42).
VII. Analyst’s Conclusion: Key Questions for the Case
- A dispositive threshold issue will be one of jurisdiction and mootness: given that an Inter Partes Review proceeding has reportedly resulted in the cancellation of claim 1—the only claim asserted in the complaint—the court's primary determination will be whether a valid patent right and a live controversy sufficient to support this infringement action still exist.
- Should the patent claim be deemed valid and enforceable, a central issue will be one of claim construction: how should the term "at least partially floats" be defined? The outcome of the case would likely depend on whether this requires a specific, unconstrained physical interaction with the concrete surface, and whether the accused product operates in such a manner.
- Finally, a key evidentiary question will be one of operational proof: what technical evidence, beyond marketing materials, demonstrates that the accused TS6100e performs the specific, multi-step process recited in claim 1, particularly the distinct functions of the "grade establishing element" and the "floating" "vibratable member"?