DCT
2:24-cv-08401
Sqip LLC v. Ultra Stones LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: SQIP, LLC (Florida)
- Defendant: Ultra Stones, LLC (New York)
- Plaintiff’s Counsel: Long Tuminello, LLP
- Case Identification: 2:24-cv-08401, E.D.N.Y., 12/06/2024
- Venue Allegations: Venue is alleged to be proper because Defendant is a New York company residing in the district, has a regular and established physical place of business in the district, and has allegedly committed acts of infringement in the district.
- Core Dispute: Plaintiff alleges that Defendant’s engineered quartz slab products are manufactured using a patented method for creating decorative veins, thereby infringing a patent covering that manufacturing process.
- Technical Context: The lawsuit concerns the manufacturing of engineered stone, a popular material for countertops, which aims to replicate the aesthetic of natural stone like marble through artificial means.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendant with notice of the patent-in-suit and the alleged infringement on January 30, 2023, and again on February 7, 2023. The complaint also notes that the patent portfolio, including the patent-in-suit, has been licensed to a third party, Elite Quartz Mfg. LLC.
Case Timeline
| Date | Event |
|---|---|
| 2018-01-02 | Earliest Priority Date for ’912 Patent |
| 2019-08-13 | U.S. Patent No. 10,376,912 Issued |
| 2023-01-30 | Plaintiff allegedly advised Defendant of the ’912 Patent and infringement |
| 2023-02-07 | Plaintiff allegedly sent a further letter to Defendant regarding infringement |
| 2024-12-06 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,376,912 - Apparatus and Method for Depositing Color Into Cracks of a Moving Formed Quartz Slab To Create Veins in an Engineered Stone
- Patent Identification: U.S. Patent No. 10,376,912, "Apparatus and Method for Depositing Color Into Cracks of a Moving Formed Quartz Slab To Create Veins in an Engineered Stone," issued August 13, 2019 (’912 Patent).
The Invention Explained
- Problem Addressed: The patent addresses the "perceived lack of natural, random looking veins and color patterns" in engineered quartz stone compared to natural stone like marble and granite (’912 Patent, col. 1:62-65).
- The Patented Solution: The invention describes a method and apparatus to create these veins. The process involves taking a "soft, damp, slightly pressed slab" of quartz mixture and mechanically moving a portion of it vertically out of alignment, which introduces a crack (’912 Patent, Abstract; col. 2:10-14). While the crack is held open by the mechanical force, a colored material is deposited or sprayed into it, forming a vein. The force is then removed, allowing the crack to close (’912 Patent, col. 4:1-9). This process can be repeated with different devices to create a network of veins.
- Technical Importance: This technology provides a controllable, mechanical method for embedding aesthetically desirable, randomized veins into engineered stone during the manufacturing process, rather than relying on surface-level printing or less predictable mixture-based techniques.
Key Claims at a Glance
- The complaint asserts independent method claim 11 (’912 Patent, col. 16:36-58; Compl. ¶34).
- Essential elements of Claim 11:
- Causing a first portion of a slab to move vertically out of alignment with a surrounding area, thereby introducing a crack by using a device located between the slab portion and a ground surface to apply force.
- Depositing a colored material into the open crack, which then becomes a vein.
- Causing the crack to close and the slab portion to move back into alignment by no longer applying the force after the material is deposited.
- The process is performed while the slab is a "damp particulate mixture."
- The complaint asserts infringement of at least claim 11 (Compl. ¶34).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are engineered quartz products sold by Ultra Stones, including those under the names "Waterlily," "Venato Ultra," "Afina," "Calacatta Valence," and "Zermat" (collectively, the "Accused '912 Patent Products") (Compl. ¶19).
Functionality and Market Context
- The complaint alleges these products are engineered quartz slabs featuring decorative, vein-like patterns (Compl. ¶20, ¶22, ¶24). An image of the "Waterlily" product shows a polished quartz slab with dark, branching veins against a lighter background (Compl. ¶20). The complaint alleges, based on expert analysis, that the appearance and nature of the cracks in the accused products indicate they are manufactured by a process that includes cracking a damp particulate mixture by applying pressure from below and depositing color into the resulting open cracks (Compl. ¶41-42).
IV. Analysis of Infringement Allegations
The complaint’s infringement allegations are based on "information and belief" and inferences drawn from an expert's analysis of the final, finished products (Compl. ¶37-42).
’912 Patent Infringement Allegations
| Claim Element (from Independent Claim 11) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method comprising: causing a first portion of a slab to move vertically out of alignment with an area of the slab surrounding the first portion of the slab and thereby introducing a first crack in the first portion of the slab by using a first device located between the first portion and a ground surface to cause a force to be applied to the first portion of the slab; | The accused products are allegedly made by a process that includes moving a portion of the slab vertically out of alignment to introduce a crack, using a device located below the slab to apply force. | ¶37, ¶41-42 | col. 4:1-6 |
| and depositing a first material having a color into the first crack of the slab, so that the first crack deposited with the first material becomes a vein having the color of the first material; | The accused products are allegedly made by a process that includes depositing a colored material into the created crack to form a vein. An image of the "Afina" product shows a slab with a prominent blue-grey vein structure (Compl. ¶24). | ¶38, ¶41-42 | col. 4:6-9 |
| causing the first crack to close and the first portion of the slab to move vertically back into alignment...by no longer applying the force...after the first material is deposited into the first crack; | The accused products are allegedly made by a process that includes closing the crack by removing the applied force after the colorant is deposited. | ¶39, ¶42 | col. 16:49-55 |
| and wherein the slab is a damp particulate mixture. | The slab that ultimately forms the accused products is allegedly in the form of a damp particulate mixture when the force is applied to create the crack. | ¶40, ¶41-42 | col. 16:56-58 |
- Identified Points of Contention:
- Evidentiary Question: The complaint's allegations regarding the manufacturing method are based on "information and belief" and reverse-engineering inferences from the final product's appearance. A central question will be what direct evidence, if any, Plaintiff can obtain through discovery to prove that Defendant’s manufacturing process actually performs the specific steps recited in claim 11.
- Technical Question: What evidence does the complaint provide that the accused process involves applying force from below the slab with a "device located between the first portion and a ground surface," as opposed to other methods of creating cracks, such as scoring from above or using vibration? The complaint alleges the appearance of the cracks is "indicative" of such a process (Compl. ¶42).
- Scope Question: Does the material state of the slab in Defendant's process at the time of cracking fall within the scope of a "damp particulate mixture" as that term is used in the patent?
V. Key Claim Terms for Construction
- The Term: "damp particulate mixture"
- Context and Importance: This term defines the state of the slab material when the patented cracking method is performed. Its construction is critical because infringement will depend on whether the accused manufacturing process operates on a slab in this specific, uncured or semi-cured state. Practitioners may focus on this term because the physical properties of the slab (e.g., its plasticity, moisture content) are central to the claimed method of creating cracks by physical displacement.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent’s background describes the initial mixture of quartz, polymers, and binders as a "slightly damp mixture" before it is pressed and cured, which could support an interpretation covering a range of pre-cured compositions (’912 Patent, col. 1:50-54).
- Evidence for a Narrower Interpretation: The specification also describes the slab as being "soft, damp, slightly pressed" and having a "consistency similar to damp soil" (’912 Patent, col. 2:11-12; col. 12:62-64). This language could support a narrower construction requiring a specific, low level of compaction and a particular physical state.
VI. Other Allegations
- Indirect Infringement: The complaint does not contain specific allegations of indirect infringement (inducement or contributory infringement). It pleads direct infringement under 35 U.S.C. § 271(a) and infringement via importation of a product made by a patented process under 35 U.S.C. § 271(g) (Compl. ¶34-35).
- Willful Infringement: The complaint alleges willful infringement based on Defendant's alleged continued infringement after receiving notice of the ’912 Patent. The complaint cites notice letters sent on January 30, 2023 and February 7, 2023, as establishing pre-suit knowledge (Compl. ¶31, ¶43, ¶45).
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this dispute will likely depend on the answers to two primary questions:
- An evidentiary question of process: Can the Plaintiff, through discovery, produce direct evidence that the Defendant's manufacturing facilities utilize a process that meets the specific mechanical limitations of claim 11—namely, cracking an uncured slab by applying force from a device below it—or will the case rely entirely on inference from the appearance of the final product?
- A definitional question of claim scope: What is the precise technical meaning of a "damp particulate mixture" in the context of the patent? The viability of the infringement claim will turn on whether the material state of the slab in the accused process at the moment of vein creation falls within the court's construction of this critical term.