DCT
1:17-cv-07073
Heifetz v. Sika Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Raphael Heifetz (Israel)
- Defendant: Sika Corporation (New Jersey)
- Plaintiff’s Counsel: McCarter & English LLP; Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P.
- Case Identification: 1:17-cv-07073, D.N.J., 12/11/2017
- Venue Allegations: Venue is based on Defendant being a New Jersey corporation with its principal place of business and a regular and established place of business within the district.
- Core Dispute: Plaintiff alleges that Defendant’s waterproofing membrane products infringe a patent related to multi-layer sealing sheet assemblies designed to resist damage from movements in underlying construction surfaces.
- Technical Context: The technology concerns flexible waterproofing membranes used in construction for surfaces such as roofs, basements, and tunnels to prevent water ingress.
- Key Procedural History: The complaint alleges a detailed pre-suit history, beginning with confidential disclosures of the invention by Plaintiff to Defendant and its predecessor Sarnafil International AG under non-disclosure agreements in 1998. The complaint further alleges that after Defendant acquired Sarnafil and began selling the accused products, Plaintiff’s patent was cited as prior art during the prosecution of Defendant's own patents. Plaintiff’s 2016 offer to license the patent was rejected by Defendant.
Case Timeline
| Date | Event |
|---|---|
| 1997-11-03 | U.S. Patent No. 6,586,080 Priority Date |
| 1998-04-08 | Plaintiff enters into NDA with Sika AG |
| 1998-04-20 | Plaintiff enters into NDA with Sarnafil International AG |
| 1998-05-06 | Plaintiff makes confidential disclosure to Sarnafil |
| 1998-05-07 | Plaintiff makes confidential disclosure to Sika AG |
| 1998-05-28 | Sika AG informs Plaintiff it will not proceed with marketing |
| 2003-07-01 | U.S. Patent No. 6,586,080 issues |
| 2005-01-01 | Sika AG acquires Sarnafil International AG (approx. date) |
| 2010-01-01 | Launch of Accused Sarnafil® G476 SA Products (approx. date) |
| 2012-01-01 | Launch of Accused SikaProof A Products (approx. date) |
| 2016-06-08 | Plaintiff’s counsel offers license to Defendant |
| 2016-07-20 | Defendant’s counsel rejects license offer |
| 2017-12-11 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,586,080 - "Sealing Sheet Assembly For Construction Surfaces And Methods Of Making And Applying Same"
- Patent Identification: U.S. Patent No. 6,586,080, "Sealing Sheet Assembly For Construction Surfaces And Methods Of Making And Applying Same," issued July 1, 2003 (’080 Patent).
The Invention Explained
- Problem Addressed: The patent addresses the failure of conventional waterproofing membranes. Sheets fully bonded to a surface tend to rupture when the underlying construction moves or cracks, while non-bonded (or "loose-laid") sheets avoid rupture but permit massive lateral water spread if the sheet is torn. (’080 Patent, col. 1:50-59, col. 2:13-23).
- The Patented Solution: The invention is a multi-layer sealing sheet assembly that combines a fluid-impermeable upper layer with a flexible lower layer. The two layers are "at least partially attached" in a manner that allows them to locally detach or slip relative to one another when subjected to tensile forces from the underlying surface. This mechanism dissipates stress, protecting the upper waterproof layer from rupturing, while the partial attachment pattern (e.g., forming "closed cells") contains any potential leakage to a restricted area, preventing a widespread flood under the membrane. (’080 Patent, Abstract; col. 10:15-40).
- Technical Importance: The technology aims to provide the durability of a non-bonded system with the leak-containment benefits of a fully bonded system, improving the reliability of waterproofing on dynamic construction surfaces. (’080 Patent, Abstract).
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claims 4, 21, 22, and 29. (Compl. ¶21, ¶57).
- Independent Claim 1 recites the essential elements of the sealing sheet assembly:
- An upper layer of a first substance, inherently fluid impermeable.
- A lower flexible layer of a second substance, bondable to the construction surface.
- The upper and lower layers are at least partially attached to one another.
- A functional requirement that under tensile forces, the layers locally detach or displace, which "remarkably" reduces the transmission of forces to the upper layer.
- A functional requirement that the partial attachment locally restricts the spread of leakage from a tear in the upper layer.
III. The Accused Instrumentality
Product Identification
- The complaint accuses Defendant's Sarnafil® G476 SA and SikaProof A waterproofing membrane products. (Compl. ¶20).
Functionality and Market Context
- The accused products are composite waterproofing membranes sold for use on construction surfaces like basements and other below-grade concrete structures. (Compl. ¶3, ¶64).
- The Sarnafil® G476 SA product is described as a "self-adhered composite sheet consisting of a reinforced thermoplastic waterproofing membrane and a foam backing coated with a pressure-sensitive adhesive." (Compl. ¶25). The backing is identified as a "closed-cell foam" that acts as a separation and cushioning layer. (Compl. ¶30).
- The SikaProof A product is described as a "fully and mechanically bonded composite sheet membrane" that includes an "embossed, flexible polyolefin (FPO) membrane laminated with a sealant grid and a non-woven fleece." (Compl. ¶60, ¶61). This product is designed so that when concrete is poured over it, the concrete "fully embeds in the fleece backing layer and creates a durable mechanical bond." (Compl. ¶82).
No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The infringement allegations for both accused product lines are based on similar theories. The following chart summarizes the allegations for the Sarnafil® G476 SA product against the elements of independent claim 1.
’080 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A sealing sheet assembly bondable to a construction surface comprising: (a) an upper layer of a first substance, said upper layer being selected inherently fluid impermeable; | The Sarnafil® G476 SA product contains a "reinforced thermoplastic waterproofing membrane" alleged to be the upper layer. (Compl. ¶29). | ¶29 | col. 10:41-43 |
| and (b) a lower flexible layer of a second substance, said lower flexible layer being bondable to the construction surface, said upper layer and said lower flexible layer being at least partially attached to one another; | The product’s "closed-cell foam backing" is alleged to be the lower flexible layer. (Compl. ¶36). This foam backing is coated with a pressure-sensitive adhesive, making it bondable. (Compl. ¶37, ¶40). As a composite product, the layers are alleged to be at least partially attached. (Compl. ¶42). | ¶36, ¶40, ¶42 | col. 10:3-17 |
| wherein a combination of said upper layer, said lower layer and said at least partial attachment of said layers to one another are selected such that tensile forces resulting from constructional movements acting upon the sealing sheet result in a local detachment or relative displacement of said upper layer and said lower flexible layer, thereby an ability of said lower flexible layer of transmitting said forces onto said upper layer and said lower flexible layer is remarkably reduced... | The complaint alleges on information and belief that due to the known physical properties of elastic materials and adhesives, tensile forces will cause the foam backing to elongate and the adhesive bond between the layers to weaken, resulting in local detachment and a reduction in force transmission. (Compl. ¶43-45). | ¶45 | col. 10:17-27 |
| ...said at least partial attachment is selected such that a spread of a leakage between said layers vis a tear formed in said upper layer is locally restricted. | The complaint alleges on information and belief that the manner in which the thermoplastic membrane and foam backing are attached will "locally restrict the spread of leakage between those layers via a tear formed in the membrane." (Compl. ¶48). | ¶48 | col. 10:35-40 |
- Identified Points of Contention:
- Evidentiary Questions: The complaint's allegations for the key functional limitations—"local detachment" and "remarkably reduced" force transmission—are based on "information and belief" and general principles of physics rather than specific test data for the accused products (Compl. ¶43-45, ¶87-88). A central dispute may be whether the accused products, which are described as composite sheets with "tenacious bond[s]" (Compl. ¶38, ¶46), actually exhibit the claimed decoupling behavior in practice.
- Scope Questions: The complaint alleges that the SikaProof A product’s "sealant with the PP fleece attached thereto" constitutes the "lower flexible layer" (Compl. ¶80-81). A question for the court may be whether this composite structure of sealant-plus-fleece functions as a single "layer" within the meaning of the claim.
V. Key Claim Terms for Construction
The Term: "local detachment or relative displacement"
- Context and Importance: This phrase is central to the patent's purported inventive concept of decoupling the upper waterproof layer from substrate-induced stress. The viability of the infringement case depends on whether the interactions within the accused composite membranes constitute "detachment" or "displacement." Practitioners may focus on this term because the accused products are marketed as integrated composites, not systems designed for intentional delamination.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification uses the word "sliding" alongside "detachment" and "displacement," which may support an interpretation that includes microscopic movement or stretching of an adhesive layer, not just a complete separation. (’080 Patent, col. 10:25).
- Evidence for a Narrower Interpretation: The patent’s objective is to solve the problem of ruptures in fully bonded sheets. This context may support a narrower construction requiring a degree of separation sufficient to meaningfully isolate the upper layer from stress, rather than incidental elastic deformation inherent in any bonded composite.
The Term: "remarkably reduced"
- Context and Importance: This term of degree quantifies the required functional outcome of the "local detachment." The infringement analysis hinges on how much force reduction is considered "remarkable." Practitioners may focus on this term as a potential basis for an indefiniteness challenge under 35 U.S.C. § 112, as it lacks an objective standard.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the outcome as "improved service of the sealing cover as a whole," suggesting any reduction in force transmission that leads to improved performance over the prior art could be considered "remarkable." (’080 Patent, col. 10:27-28).
- Evidence for a Narrower Interpretation: A party could argue that "remarkably" implies a surprising or unexpectedly large reduction, setting a high bar that requires more than a trivial or inherent degree of stress absorption.
VI. Other Allegations
- Willful Infringement: The complaint alleges that Defendant’s infringement has been and continues to be willful. (Compl. ¶98). The allegations are based on extensive pre-suit knowledge, including:
- Confidential disclosures of the technology by the inventor to Defendant and its predecessor, Sarnafil, under non-disclosure agreements in 1998. (Compl. ¶99-103).
- The ’080 Patent being cited as prior art by the U.S. Patent and Trademark Office against at least three of Sika Technology AG’s own U.S. patent applications, one of which lists a current Sika Corporation executive as a co-inventor. (Compl. ¶109).
- A direct offer to license the ’080 Patent was made to Defendant in 2016, which Defendant rejected. (Compl. ¶115-116).
VII. Analyst’s Conclusion: Key Questions for the Case
- A primary issue will be one of evidentiary proof: Can the Plaintiff demonstrate through technical evidence that the accused composite products—marketed as unified, bonded systems—actually perform the specific functional requirements of Claim 1, namely that their internal layers "locally detach" to achieve a "remarkably reduced" transmission of force under real-world conditions?
- A core legal question will be one of claim scope: How will the court construe the term of degree "remarkably reduced"? A narrow interpretation could make infringement difficult to prove, while its potential ambiguity may invite a challenge that the claim is invalid for indefiniteness.
- Finally, given the detailed allegations of pre-suit history dating back to 1998, a key question will be one of culpability: If infringement is found, can the Defendant successfully defend against the strong factual predicate for willful infringement, which carries the risk of enhanced damages?