DCT
2:24-cv-00242
I4f Licensing NV v. Kolay Flooring Intl LLC
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: I4f Licensing NV. (Belgium)
- Defendant: Kolay Holding LLC (Nevada); Modm Kolay Mfg LLC (Nevada); Kolay Flooring Intl, LLC (Iowa)
- Plaintiff’s Counsel: Weide & Miller, LTD.
- Case Identification: I4f Licensing NV. v. Kolay Holding LLC, et al., 2:24-cv-00242, D. Nev., 02/05/2024
- Venue Allegations: Plaintiff alleges venue is proper because Defendants have a regular and established place of business in the District of Nevada, and have manufactured, sold, and committed acts of infringement within the district.
- Core Dispute: Plaintiff alleges that Defendants’ SPC Click flooring products infringe patents related to glueless mechanical locking systems for floor panels, with infringement occurring after Defendants allegedly breached a patent license agreement and failed to pay royalties.
- Technical Context: The technology concerns interlocking systems for flooring panels that allow for installation without adhesives by using precisely shaped tongue-and-groove profiles that mechanically lock panels together horizontally and vertically.
- Key Procedural History: The complaint alleges that the parties entered into a license agreement for the asserted patents on March 21, 2023. The complaint further alleges that after Defendants failed to pay required royalties, Plaintiff terminated the license on November 24, 2023, and subsequently sent a notice letter regarding infringement on December 1, 2023. This history forms the basis for the willfulness allegations.
Case Timeline
| Date | Event |
|---|---|
| 2009-06-12 | ’336 Patent Priority Date |
| 2014-02-26 | ’046 Patent Priority Date |
| 2015-03-17 | ’336 Patent Issue Date |
| 2019-04-23 | ’046 Patent Issue Date |
| 2023-03-21 | License Agreement between i4F and Kolay |
| 2023-11-24 | License Terminated by i4F |
| 2023-12-01 | i4F sends notice letter to Kolay alleging infringement |
| 2024-02-05 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,978,336 - "Floor Panel and Floor Covering Consisting of a Plurality of Such Floor Panels"
The Invention Explained
- Problem Addressed: The patent describes prior art floor panel installation as either requiring difficult and permanent methods like gluing or nailing, or using mechanical couplings that were subject to forming undesirable gaps due to weak locking (Compl. ¶1; ’336 Patent, col. 1:26-47).
- The Patented Solution: The invention is a floor panel with specially configured, resilient coupling parts on opposite edges. These parts, comprising specific tongue, groove, and flank geometries, are designed to elastically deform when one panel is pressed against another, allowing them to snap together and form a secure, locked connection without additional adhesives. This resilient action is intended to create a reliable lock that resists both horizontal and vertical separation (’336 Patent, col. 2:25-42).
- Technical Importance: This technology facilitates faster, glueless ("floating") floor installation, which is simpler for both professional and do-it-yourself installers, while aiming to provide a more durable and gap-resistant connection than earlier mechanical systems (’336 Patent, col. 1:48-61).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶34).
- Claim 1 requires:
- A floor panel with a centrally located core.
- A first resilient coupling part with a single upward tongue, an upward flank, and a single upward groove.
- A second resilient coupling part with a single downward tongue, a downward flank, and a single downward groove.
- Specific geometric relationships for the tongues and flanks (e.g., extending in the direction of the core's normal).
- A first locking element on the upward tongue and a second locking element on the downward flank, which are "substantially rigidly" connected and adapted to co-act.
- The complaint also asserts claims 2-27, 29, 30, and 34-46 (Compl. ¶41).
U.S. Patent No. 10,267,046 - "Panel Interconnectable With Similar Panels for Forming a Covering"
The Invention Explained
- Problem Addressed: The patent seeks to provide an improved floor panel that can be coupled easily to other panels while creating a reliable and firm connection, overcoming disadvantages of prior art systems that could be complex or result in weak connections (’046 Patent, col. 2:25-34).
- The Patented Solution: The invention describes a panel with two distinct pairs of locking edges. The first pair (e.g., the long sides) is designed to lock through an "angling down movement," where a new panel is angled, inserted, and pivoted downward into place. The second pair (e.g., the short sides) is designed to lock via a "scissoring movement" that occurs simultaneously during the angling down motion, forcing the corresponding tongue and groove to deform and snap into a locked state. This combination of movements is intended to create a secure lock in horizontal, vertical, and rotational directions (’046 Patent, col. 3:15-32; Fig. 4c-4f).
- Technical Importance: This design allows for a multi-faceted locking mechanism that engages on all four sides of a panel through a single installation action (angling down), aiming to simplify installation while enhancing the stability of the final floor covering (’046 Patent, col. 4:40-48).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 24 (Compl. ¶58, ¶59).
- Claim 1 requires:
- A panel with a core and a first pair of opposite edges for locking via an "angling down movement," comprising a "sideward tongue" and a recess with an "upwardly protruding shoulder."
- A second pair of opposite edges for locking via a "scissoring movement," comprising an upward tongue with a "rigid first locking element" and a downward tongue with a "rigid second locking element."
- The design must be such that angling down one panel relative to another causes the "scissoring movement" that forces the second pair of edges to lock.
- The complaint also asserts claims 2-18, 20, 21, 23, 25-41, 43, 44, and 46-47 (Compl. ¶69).
III. The Accused Instrumentality
Product Identification
- The "Accused Products" are identified as flooring products marketed under the names “SPC Click”, “SPC Click KAI”, and “SPC Click EVA” (Compl. ¶15).
Functionality and Market Context
- The complaint alleges the Accused Products are rectangular flooring planks composed of multiple layers, including a core layer where the locking mechanisms are formed (Compl. ¶30, ¶54). The complaint includes a visual of a "Triple Lock" profile, which it alleges is used in the Accused Products and features interlocking tongue-and-groove geometry on the long and short sides of the panels (Compl. ¶32, ¶56). A second set of visuals depicts the sequential process of installing the panels by angling them and pressing them together (Compl. ¶33, ¶57).
- The complaint alleges that Defendants began manufacturing, advertising, and selling these products after entering into the license agreement and continue to do so after its termination (Compl. ¶14, ¶27).
IV. Analysis of Infringement Allegations
’336 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A floor panel, comprising: a centrally located core provided with an upper side and a lower side, | The Accused Products are planks with a centrally located core layer. | ¶35 | col. 2:55-56 |
| at least one first resilient coupling part and second resilient coupling part connected respectively to opposite edges of the core, | The locking systems on opposite edges of the Accused Products are alleged to be resilient coupling parts. The complaint points to locking profile diagrams. | ¶35 | col. 2:57-60 |
| which first coupling part comprises a single upward tongue, at least one upward flank lying at a distance from the upward tongue and a single upward groove formed between the upward tongue and the upward flank... | The locking profile of the Accused Products is alleged to possess this specific upward tongue, flank, and groove geometry. | ¶35 | col. 2:61-65 |
| at least a part of a side of the upward tongue facing toward the upward flank extends in the direction of the normal of the upper side of the core... | The geometry of the Accused Products' upward tongue allegedly meets this directional limitation. | ¶36 | col. 2:66-col. 3:1 |
| ...a first locking element which is connected substantially rigidly to the upward tongue and adapted for co-action with a second locking element... | The upward tongue of the Accused Products is alleged to have a substantially rigid locking element. | ¶37 | col. 3:6-11 |
| which second coupling part comprises a single downward tongue, at least one downward flank... and a single downward groove... | The complementary locking profile of the Accused Products is alleged to possess the claimed downward tongue, flank, and groove geometry. | ¶37 | col. 3:12-16 |
| ...the downward flank is provided with a second locking element which is connected substantially rigidly to the downward flank... | The downward flank of the Accused Products is alleged to have a substantially rigid second locking element that co-acts with the first. | ¶39 | col. 3:20-25 |
’046 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A panel... comprising: a centrally located core... a first pair of opposite edges, comprising: a first edge comprising a sideward tongue... an opposite, second edge comprising a recess... | The Accused Products are alleged to have a core and a first pair of edges (e.g., long sides) with a sideward tongue and recess. | ¶60 | col. 19:12-21 |
| the sideward tongue being designed such that locking takes place by an... angling down movement... leading to locking... in both a horizontal direction and a vertical direction; | The locking system is alleged to lock on one pair of edges via an angling down motion, as depicted in installation diagrams. | ¶61 | col. 19:22-31 |
| and a second pair of opposite edges, comprising: a third edge comprising a single upward tongue... a fourth edge comprising a single downward tongue... | The Accused Products are alleged to have a second pair of edges (e.g., short sides) with the claimed upward and downward tongue geometry. | ¶62 | col. 19:32-41 |
| the third and fourth edges being designed such that locking takes place during angling down... wherein the fourth edge... makes a scissoring movement toward the third edge... by deformation... leading to locking... | The complaint alleges that when a panel is angled down to engage the first pair of edges, the second pair of edges simultaneously undergoes a "scissoring" motion that forces them to deform and lock. | ¶63 | col. 20:1-17 |
| wherein at least a part of a side of the upward tongue facing toward the upward flank is inclined toward the upward flank... | The geometry of the upward tongue in the Accused Products is alleged to meet this inclination requirement. | ¶64 | col. 20:18-22 |
Identified Points of Contention
- Scope Questions: A central question for the ’336 patent will be the scope of "resilient coupling part." The court will need to determine what degree of elastic deformation is required by the claim and whether the accused products, which use materials like SPC (Stone Plastic Composite), exhibit this property in their coupling parts, as alleged, or if they are better described as rigid.
- Technical Questions: For the ’046 patent, a key factual question is whether the accused products actually lock via a "scissoring movement" as claimed. The complaint alleges this based on installation instructions (Compl. ¶65), but the defense may argue that the locking mechanism operates differently and does not meet this specific functional limitation. The allegation that the same locking profile infringes both patents may raise questions about whether the profiles are primarily "resilient" (’336) or operate via a "scissoring" of "rigid" elements (’046).
V. Key Claim Terms for Construction
Term from ’336 Patent: "resilient coupling part" (Claim 1)
- Context and Importance: The claim requires the coupling parts to be "resilient" to enable the snap-fit locking mechanism. The infringement analysis will depend on whether the material and geometry of the accused products' locking profiles cause them to function in a "resilient" manner. Practitioners may focus on this term because the defendant could argue its product's core material is rigid and does not rely on the "resilience" of the coupling part itself for locking.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent states that during coupling, "one or both coupling parts will deform elastically (move resiliently)" and then move back to their original position, suggesting the term relates to functional behavior rather than a specific material (’336 Patent, col. 2:30-36).
- Evidence for a Narrower Interpretation: The specification discusses the coupling parts in the context of a "laminated floor panel" and describes how the parts are formed from the core, which could be used to tie the term to the properties of materials commonly used for such cores at the time, such as fibreboard (’336 Patent, col. 1:16, Fig. 1).
Term from ’046 Patent: "scissoring movement" (Claim 1)
- Context and Importance: This term defines the specific method of locking for the second pair of edges. Infringement of the ’046 patent hinges on whether the accused products, when installed, exhibit this particular action. A defendant may argue their product locks via a simple push-down or "click" mechanism that does not constitute a "scissoring movement."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term itself is not explicitly defined, leaving it open to its plain and ordinary meaning. A plaintiff could argue any interaction where the end-edges are forced together as a consequence of angling the side-edges constitutes a "scissoring movement."
- Evidence for a Narrower Interpretation: The specification describes the movement in detail: "the fourth edge of a panel to be coupled makes a scissoring movement toward a third edge of yet another panel, such that the downward tongue... will be forced into the upward groove... by deformation" (’046 Patent, col. 3:18-25). This language suggests a specific sequence involving force, deformation, and engagement that a defendant could argue is not present in its product.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of infringement by asserting that Kolay provides its customers with installation instructions that "necessarily require that the claims of the ['336 and '046 Patents] are infringed" (Compl. ¶44, ¶68). It also alleges contributory infringement, stating the Accused Products are not staple articles of commerce and have no substantial non-infringing uses (Compl. ¶42, ¶66).
- Willful Infringement: Willfulness is alleged based on Kolay's knowledge of the Asserted Patents dating from at least the execution of the license agreement on March 21, 2023. The complaint further alleges that Kolay's infringement continued after the license was terminated and after it was "specifically being put on notice of its patent infringement" via a letter from i4F's counsel (Compl. ¶24, ¶27, ¶50, ¶75).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of technical operation: Does the accused "Triple Lock" system function primarily through the "resilience" of its coupling parts as described in the ’336 patent, or through a combination of an "angling down" motion and a "scissoring movement" between "rigid" elements as claimed in the ’046 patent? The plaintiff's assertion that the same product infringes both patents, which describe arguably different locking principles, will be a central point of examination.
- A second key question will be one of claim construction and scope: The resolution of the dispute will likely depend on the court's construction of terms of degree, such as "resilient" and "substantially rigid." The outcome will turn on whether the physical properties and geometric tolerances of the Accused Products fall within the legally defined boundaries of these terms.
- Finally, the case presents a significant question of willfulness and damages: Given the prior licensing relationship and the explicit notice of infringement alleged in the complaint, a key focus will be on whether Kolay's post-termination conduct was objectively reckless, potentially exposing it to enhanced damages if infringement is found.