DCT
5:18-cv-00890
Progress Profiles Spa v. M D Building Products Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Progress Profiles SpA (Italy)
- Defendant: M-D Building Products, Inc. (Oklahoma) and Loxcreen Canada Ltd. (Canada)
- Plaintiff’s Counsel: Lee Sheikh Megley & Haan; Federman & Sherwood
- Case Identification: 5:18-cv-00890, W.D. Okla., 02/27/2019
- Venue Allegations: Venue is alleged to be proper in the Western District of Oklahoma because Defendant M-D Building is incorporated in Oklahoma, both defendants regularly transact business and have committed alleged acts of infringement in the district, and end-user direct infringers reside in the district.
- Core Dispute: Plaintiff alleges that Defendants’ Prova Flex-Heat heated flooring underlayment product infringes four U.S. patents related to underlayment systems for positioning heating elements.
- Technical Context: The technology involves underlayment membranes used in radiant floor heating systems, which serve both to uncouple the subfloor from the main floor (preventing cracks) and to hold heating cables in place.
- Key Procedural History: The complaint alleges a multi-year history of pre-suit notice. Plaintiff's counsel allegedly sent letters and emails to Defendants identifying each of the patents-in-suit (or their pending applications) and providing claim charts demonstrating the alleged infringement, beginning in January 2016. These allegations form the basis for the willfulness claims.
Case Timeline
| Date | Event |
|---|---|
| 2009-08-28 | Earliest Priority Date for ’348 and ’746 Patents |
| 2014-03-01 | Plaintiff launches Prodeso® Heat product |
| 2014-08-18 | Earliest Priority Date for ’163 and ’423 Patents |
| 2015-11-17 | ’348 Patent Issued |
| 2016-01-11 | Plaintiff sends first notice letter to Defendants re: ’348 Patent |
| 2016-02-01 | Defendant launches Prova Flex-Heat product in the U.S. |
| 2016-03-22 | Plaintiff sends second notice letter with claim chart re: ’348 Patent |
| 2016-12-13 | ’746 Patent Issued |
| 2017-03-09 | Plaintiff sends notice email with claim charts re: ’746 and ’163 Patents |
| 2017-04-18 | ’163 Patent Issued |
| 2018-11-29 | Plaintiff sends notice email with claim chart re: application for ’423 Patent |
| 2019-02-26 | ’423 Patent Issued |
| 2019-02-27 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,188,348 - Method and Apparatus for Positioning Heating Elements, issued November 17, 2015
The Invention Explained
- Problem Addressed: Prior art underlayment systems for floor heating are described as having certain drawbacks. For example, some systems use a continuous mat that prevents layers of adhesive above and below the mat from bonding to each other, potentially weakening the floor structure. Additionally, wires in some systems are not securely held, which can lead to uneven heating or wire damage. (’348 Patent, col. 1:60-col. 2:5).
- The Patented Solution: The invention is an underlayment system comprising a base member with a plurality of "bosses" (protrusions) extending from it. These bosses are spaced to securely hold a heating wire or tube between them. Critically, the system includes openings in the base between the bosses, and potentially through the bosses themselves, allowing adhesive to pass through the underlayment layer and bond the subfloor to the upper flooring layers, creating a more cohesive structure. (’348 Patent, Abstract; col. 2:36-40).
- Technical Importance: This design aims to provide a single product that both secures heating elements and facilitates a strong, monolithic bond between flooring layers, eliminating the need for separate components and addressing potential structural weaknesses of prior art mats. (’348 Patent, col. 2:6-12).
Key Claims at a Glance
- The complaint asserts infringement of independent claim 21 and dependent claims 22 and 25 (Compl. ¶¶ 207-212).
- Independent Claim 21 recites an underlayment for an in-floor heating element with the following essential elements:
- A base layer with a first boss and a second boss extending therefrom.
- The first boss has a first upper surface, and the second boss has a second upper surface that is co-planar with the first.
- These upper surfaces facilitate a direct bonding surface with an adhesive.
- The first and second bosses have a uniform thickness between the base layer and their respective upper surfaces.
U.S. Patent No. 9,518,746 - Method and Apparatus for Positioning Heating Elements, issued December 13, 2016
The Invention Explained
- Problem Addressed: This patent, which shares a specification with the ’348 patent, addresses the same problems of securing heating elements and ensuring structural integrity of the flooring assembly. (’746 Patent, col. 1:15-col. 2:23).
- The Patented Solution: The invention is an underlayment layer featuring a matrix of bosses on a single base. The claims focus on a specific geometry for the bosses, describing them as having a "curved outer surface forming a bowl." The claims also define a specific relationship between the perimeters of the curved outer surface at different heights, creating a shape that can frictionally secure a heating element. (’746 Patent, Abstract; col. 2:24-33).
- Technical Importance: This specific boss geometry is presented as a way to securely retain heating elements via a friction or interference fit, ensuring proper spacing and protection of the wires during installation. (’746 Patent, col. 3:28-33).
Key Claims at a Glance
- The complaint asserts infringement of independent claims 1, 9, and 10, as well as dependent claims (Compl. ¶¶ 217-222).
- Independent Claim 1 recites an underlayment layer for a radiant-heating system with the following essential elements:
- A plurality of bosses in a matrix orientation on a single base layer.
- Each boss has an upper surface and a "curved outer surface forming a bowl."
- A "first perimeter" of the curved outer surface (adjacent to the base) is shorter than a "second perimeter" at a height approximately halfway up the boss.
- The "second perimeter" is shorter than a "maximum perimeter" of the curved outer surface.
U.S. Patent No. 9,625,163 - Method and Apparatus for Positioning Heating Elements, issued April 18, 2017
- Patent Identification: U.S. Patent No. 9,625,163, Method and Apparatus for Positioning Heating Elements, issued April 18, 2017 (Compl. ¶11).
- Technology Synopsis: This patent describes an underlayment with protrusions configured as geometric shapes extending from a base material. The claims focus on the relationship between adjacent protrusions, which form an "element receiving cavity" with specific geometric properties (e.g., obtuse angles, sloping surfaces) designed to contain a heating element. (’163 Patent, Abstract).
- Asserted Claims: Independent claims 1, 6, and 7 are asserted (Compl. ¶¶ 227, 230).
- Accused Features: The complaint alleges that the protrusions on the Prova Flex-Heat product, and the cavities formed between them, meet the geometric and functional limitations of the asserted claims (Compl. ¶¶ 68-84).
U.S. Patent No. 10,215,423 - Method and Apparatus for Positioning Heating Elements, issued February 26, 2019
- Patent Identification: U.S. Patent No. 10,215,423, Method and Apparatus for Positioning Heating Elements, issued February 26, 2019 (Compl. ¶13).
- Technology Synopsis: This patent describes a floor underlayment comprising a base layer, a plurality of protrusions (or "routing hubs") extending from the base, and a "pad layer" attached to the bottom side of the base. The pad layer is described as potentially being made of materials like non-woven fabric, foil, or insulative material. (’423 Patent, Abstract; col. 7:1-19).
- Asserted Claims: Independent claims 1, 9, and 20 are asserted (Compl. ¶¶ 236, 239).
- Accused Features: The complaint alleges that the Prova Flex-Heat product has a base layer, a pad layer attached to it, and protrusions, thereby infringing the asserted claims (Compl. ¶¶ 59-67, 93-95).
III. The Accused Instrumentality
Product Identification
- The accused product is the "Prova Flex-Heat" heated floor support underlayment (Compl. ¶18).
Functionality and Market Context
- The complaint alleges the Prova Flex-Heat product is a membrane installed between a subfloor and the main floor (e.g., tile) (Compl. ¶52). A diagram of the accused product shows a multi-layered system including a non-woven fleece, a membrane with protrusions for holding a heating cable, and the final tile layer. (Compl. ¶51). This diagram illustrates the product's use in a floor assembly, showing how a heating cable is routed between protrusions. (Compl. ¶51).
- Functionally, the product is alleged to perform the same dual roles as the patented invention: uncoupling the subfloor from the main floor to prevent cracking and securing a heating cable, thereby eliminating the need for separate underlayments (Compl. ¶52). The product was launched in the U.S. in February 2016 and is sold in direct competition with Plaintiff's Prodeso® Heat product (Compl. ¶53).
IV. Analysis of Infringement Allegations
’348 Patent Infringement Allegations
| Claim Element (from Independent Claim 21) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a base layer with a first boss and a second boss extending therefrom | The Prova Flex-Heat product has a base layer and multiple protrusions (bosses) extending from it. | ¶¶60, 75, 94 | col. 2:20-22 |
| the first boss includes a first upper surface, the second boss includes a second upper surface co-planar with the first upper surface | The upper surfaces of the bosses on the Prova Flex-Heat product are co-planar with each other. | ¶109 | col. 8:59-62 |
| and wherein the first and second upper surfaces facilitate a direct bonding surface with an adhesive | The upper surfaces of the bosses are alleged to facilitate a direct bonding surface with an adhesive. | ¶110 | col. 8:62-64 |
| wherein the first boss and the second boss has a uniform thickness between the base layer and the respective first upper surface and second upper surface. | The bosses on the Prova Flex-Heat product allegedly have a uniform thickness. | ¶111 | col. 8:6-10 |
’746 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An underlayment layer... comprising: a plurality of bosses disposed in a matrix orientation on top of a single base layer | The Prova Flex-Heat product allegedly has multiple bosses arranged in a matrix orientation on a single base layer. | ¶95 | col. 2:20-22 |
| each of the plurality of bosses comprising an upper surface and a curved outer surface forming a bowl | Each boss on the Prova Flex-Heat product is alleged to have an upper surface and a curved outer surface that forms a bowl. | ¶¶99, 100 | col. 7:18-21 |
| wherein a first perimeter of the curved outer surface adjacent the base layer of least one boss is shorter than a second perimeter of the curved outer surface at a height approximately halfway between the single base layer and the upper surface of the at least one boss | The complaint alleges that for at least one boss, the perimeter at the base is shorter than the perimeter at a height approximately halfway to the upper surface. | ¶103 | col. 7:21-27 |
| and further wherein the second perimeter is shorter than a maximum perimeter of the curved outer surface of the at least one boss. | The complaint alleges that for at least one boss, the perimeter at the halfway point is shorter than the maximum perimeter of the boss's curved outer surface. | ¶104 | col. 7:27-30 |
Identified Points of Contention
- Scope Questions: A central question for the ’746 patent will be the interpretation of the highly specific geometric limitations. Does the shape of the accused product's protrusions satisfy the claim requirement of a "curved outer surface forming a bowl"? Further, does it meet the specific ratio of perimeters at the base, "approximately halfway" up, and at the maximum point?
- Technical Questions: What evidence does the complaint provide that the accused product's bosses have a "uniform thickness" as required by claim 21 of the ’348 patent? The infringement allegation for this element is conclusory (Compl. ¶111), and this may become a point of factual dispute requiring expert measurement and analysis.
V. Key Claim Terms for Construction
For the ’348 Patent:
- The Term: "boss"
- Context and Importance: This term is the fundamental structural element of the invention. Its construction will determine what types of protrusions fall within the scope of the claims. Practitioners may focus on this term because the patent describes specific embodiments (e.g., hollow, ring-shaped) that could be used to argue for a narrower definition than the more general term might otherwise imply.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself simply requires "bosses" extending from a base, without specifying a shape, suggesting any protrusion could qualify (e.g., ’348 Patent, col. 9:8). The summary of the invention describes a system with "a plurality of bosses emanating therefrom" without further limitation. (’348 Patent, col. 2:21-22).
- Evidence for a Narrower Interpretation: The detailed description repeatedly refers to specific embodiments where the bosses are "ring shaped" or "hollow" with openings. (’348 Patent, col. 3:5-6, col. 3:15-16). A defendant may argue these specific descriptions limit the term "boss" to structures with these features.
For the ’746 Patent:
- The Term: "curved outer surface forming a bowl"
- Context and Importance: This descriptive phrase is at the heart of the infringement allegation for the ’746 patent and is a primary point of distinction from the ’348 patent. The case may turn on whether the accused product's protrusions, which appear generally frustoconical in the complaint's diagram (Compl. ¶51), can be considered to form a "bowl."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term is not explicitly defined, leaving it open to its plain and ordinary meaning, which could arguably encompass any concave or bowl-like shape. The claim itself provides the functional context of creating a specific perimeter geometry to secure a wire, which could support interpreting "bowl" more functionally than structurally. (’746 Patent, col. 7:18-30).
- Evidence for a Narrower Interpretation: The figures in the patent (e.g., ’746 Patent, Fig. 9) depict a specific, smooth, rounded or semi-spherical shape for the outer surface. A defendant may argue that "bowl" requires a particular curvature or shape consistent with these drawings, and that a faceted or purely conical surface, as might be present on their product, does not qualify.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendants induce infringement by providing instructions for the installation and use of Prova Flex-Heat in an infringing manner (Compl. ¶¶ 145-150, 208). It also alleges contributory infringement, asserting that Prova Flex-Heat is a material part of the patented inventions, is especially made for an infringing use, and is not a staple article of commerce with substantial non-infringing uses (Compl. ¶¶ 209, 213, 219, 223).
- Willful Infringement: The complaint makes detailed allegations of willful infringement for all four patents. It cites specific dates of pre-suit notice letters and emails, some of which allegedly included claim charts, informing Defendants of the patents and the alleged infringement (Compl. ¶¶ 188-206). The complaint alleges that Defendants continued to make and sell the accused product after receiving this notice, supporting the claim of deliberate and flagrant infringement (Compl. ¶¶ 216, 226).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the descriptive claim term "curved outer surface forming a bowl" from the ’746 patent be construed to read on the geometry of the protrusions in the accused Prova Flex-Heat product? The resolution will depend on whether the term is given a broad, functional meaning or is limited to the specific shapes depicted in the patent's embodiments.
- A second central question will be one of factual proof: assuming the claim terms are construed in Plaintiff's favor, does the accused product actually meet the specific geometric limitations of the patents? This will likely involve a battle of experts over measurements and analysis to determine if the Prova Flex-Heat product possesses, for example, the "uniform thickness" required by the ’348 patent and the precise perimeter ratios required by the ’746 patent.
- A key legal issue will be willfulness: given the detailed allegations of repeated pre-suit notice with claim charts, a significant focus of the litigation will likely be on whether Defendants' continued sales constituted willful infringement, which would expose them to the risk of enhanced damages.