DCT
4:17-cv-01706
Vitro Flat Glass v. Masonite
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Vitro Flat Glass, LLC (Delaware) and Vitro, S.A.B. de C.V. (Mexico)
- Defendant: Masonite Corporation (Delaware)
- Plaintiff’s Counsel: The Webb Law Firm
- Case Identification: 4:17-cv-01706, M.D. Pa., 09/20/2017
- Venue Allegations: Venue is based on Defendant's alleged commission of infringing acts within the district and its operation of a "regular and established place of business" in Northumberland County, Pennsylvania.
- Core Dispute: Plaintiff alleges that Defendant’s insulating glass inserts for doors, and the methods used to make them, infringe three patents related to low thermal conducting spacer assemblies for insulating glass units.
- Technical Context: The technology addresses "warm edge" spacers in multi-pane insulating glass units, which are critical for reducing heat loss at the perimeter of windows and doors to improve overall energy efficiency.
- Key Procedural History: The complaint alleges a complex history wherein Defendant's predecessor licensed related Canadian patents from Plaintiff's predecessor. Plaintiff alleges Defendant subsequently moved the manufacturing equipment to the U.S. in 2008, paid royalties on its use until August 2010, and was explicitly notified of its need for a license to the U.S. patents-in-suit as early as July 2011. This history may be central to the allegations of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 1990-09-04 | Earliest Priority Date for ’282, ’944, and ’946 Patents |
| 1997-08-12 | U.S. Patent No. 5,655,282 Issued |
| 1997-10-14 | U.S. Patent No. 5,675,944 Issued |
| 1998-06-09 | U.S. Patent No. 5,761,946 Issued |
| 2000-06-01 | Predecessor licensing agreement for related Canadian patents (approx.) |
| 2008-01-01 | Masonite allegedly moves manufacturing equipment to the U.S. (approx.) |
| 2008-2010 | Masonite allegedly pays royalties on U.S. equipment use |
| 2011-07-21 | Masonite allegedly informed of need for license to patents-in-suit |
| 2017-09-20 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 5,655,282 - "Low Thermal Conducting Spacer Assembly for an Insulating Glazing Unit and Method of Making Same"
- Patent Identification: U.S. Patent No. 5,655,282, "Low Thermal Conducting Spacer Assembly for an Insulating Glazing Unit and Method of Making Same," issued August 12, 1997.
The Invention Explained
- Problem Addressed: The patent describes how conventional insulating glass units, while effective at the center, suffer from significant heat loss at the edges. This is primarily due to the use of highly conductive metal spacers that separate the glass panes, creating a "thermal short circuit" that can lead to condensation and reduced energy efficiency (’282 Patent, col. 2:50-64).
- The Patented Solution: The invention is a method for making an insulating unit with a "warm edge" assembly that has high resistance to heat flow (a high "RES-value"). This is achieved by forming a U-shaped metal spacer frame, applying a moisture and gas impervious sealant to its outer legs, and carefully selecting the materials and dimensions to meet a specified thermal performance threshold, thereby creating a long diffusion path that also minimizes gas loss (’282 Patent, Abstract; col. 3:7-19).
- Technical Importance: This design approach was a key development in "warm edge technology," which sought to improve the overall energy performance of windows and doors beyond what was possible by just improving the center-of-glass value (’282 Patent, col. 1:29-34).
Key Claims at a Glance
- The complaint asserts infringement of at least one claim without specification (Compl. ¶32). Independent method claim 1 is representative.
- Essential elements of Claim 1 include:
- forming a metal spacer frame having a base and two upright legs in a "generally U-shaped configuration";
- providing a "moisture and gas impervious sealant" on the outer surface of the upright legs;
- selecting the metal and dimensions of the frame and sealant to provide an edge assembly with a "RES-value of at least 10"; and
- securing two sheets of glass to the sealant-coated legs to form a sealed compartment.
- The complaint does not foreclose the assertion of other claims.
U.S. Patent No. 5,675,944 - "Low Thermal Conducting Spacer Assembly for an Insulating Glazing Unit and Method of Making Same"
- Patent Identification: U.S. Patent No. 5,675,944, "Low Thermal Conducting Spacer Assembly for an Insulating Glazing Unit and Method of Making Same," issued October 14, 1997.
The Invention Explained
- Problem Addressed: Like its sibling patent, the ’944 Patent addresses the problem of poor thermal performance at the edge of insulating glass units caused by conductive spacers and the potential for insulating gas to leak out over time (’944 Patent, col. 2:50-65).
- The Patented Solution: This patent claims the insulating unit apparatus itself. The core of the invention is an edge assembly comprising a "structurally sound" U-shaped metal spacer that is held apart from the glass sheets. A gas-impervious sealant bridges the gap between the spacer legs and the glass, creating a high-resistance, long diffusion path that minimizes both thermal bridging and gas leakage (’944 Patent, Abstract; col. 17:28-68).
- Technical Importance: By claiming the finished product, the patent provides protection for the tangible "warm edge" window or door unit that delivers improved energy efficiency (’944 Patent, col. 1:26-31).
Key Claims at a Glance
- The complaint asserts infringement of at least one claim without specification (Compl. ¶35). Independent apparatus claim 1 is representative.
- Essential elements of Claim 1 include:
- a first and second glass sheet;
- an edge assembly between the sheets with a "RES-value of at least 10";
- the assembly includes a "moisture and gas impervious, structurally sound metal spacer" with a U-shaped configuration; and
- the assembly also includes a "moisture and gas impervious sealant" that contacts the spacer's outer legs and the inner surface of the glass sheets.
- The complaint does not foreclose the assertion of other claims.
U.S. Patent No. 5,761,946 - "Method of Making Spacer Stock"
- Patent Identification: U.S. Patent No. 5,761,946, "Method of Making Spacer Stock," issued June 9, 1998.
Technology Synopsis
This patent claims a specific method for manufacturing the spacer stock used in the insulating units of the other patents-in-suit. It discloses a process where a flat, elongated substrate is moved through a series of upper and lower forming wheels. These wheels progressively bend the flat stock into the required U-shaped profile while simultaneously shaping a bead of desiccant-laden adhesive onto the base of the spacer (’946 Patent, Abstract).
Asserted Claims
The complaint asserts infringement of at least one claim without specification (Compl. ¶38).
Accused Features
The complaint alleges that Masonite's use of "the Specialty equipment" and similar machinery to manufacture its insulating glass inserts infringes the claimed method (Compl. ¶¶ 20, 24).
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are "insulating glass inserts" that are manufactured, marketed, and sold by Masonite for use in its interior and exterior doors, as well as associated transoms and sidelites (Compl. ¶20). The complaint lists numerous specific product lines by name, such as Alston, Aria, Brise, and others, as well as door styles including AvantGuard, Barrington, and VistaGrande (Compl. ¶¶ 25-26).
Functionality and Market Context
The complaint alleges these glass inserts are manufactured in the United States using "the Specialty equipment" that was previously used in Canada to practice related technology (Compl. ¶¶ 19-20). It is alleged that this equipment is used to perform an infringing method and that the resulting glass inserts embody the patented spacer assembly technology (Compl. ¶24). The complaint further alleges that the equipment has "no substantial non-infringing use" for manufacturing these inserts (Compl. ¶24).
No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint provides a high-level theory of infringement without detailed element-by-element analysis. The following charts summarize the core allegations based on the complaint's narrative.
5,655,282 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method of making an insulating unit... comprising the steps of: forming a metal spacer frame... having a generally U-shaped configuration... | The complaint alleges Masonite uses "the Specialty equipment" and similar machinery in the United States to manufacture its insulating glass inserts. This process is alleged to include forming the spacer frame. | ¶20, ¶24 | col. 15:43-45 |
| selecting the metal and physical dimensions of the spacer frame and sealant, such that the edge assembly is provided with a RES-value of at least 10... | The glass inserts manufactured by Masonite are alleged to infringe the patents-in-suit, which implies the manufacturing method results in an assembly meeting the claimed thermal performance. | ¶24, ¶25 | col. 17:5-15 |
| securing a first sheet by the sealant on the outer surface of the first upright leg and a second sheet by the sealant on the outer surface of the second upright leg... | The accused infringing activity is the "manufacture, marketing, and sale of the glass inserts," which are necessarily assembled by securing glass sheets to a spacer. | ¶24 | col. 17:10-25 |
5,675,944 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An insulating unit... comprising: a first glass sheet... a second glass sheet... an edge assembly between the... sheets... having a RES-value of at least 10... | The accused glass inserts sold by Masonite are alleged to be infringing products, implying they are insulating units that contain an edge assembly meeting the claimed RES-value. | ¶24, ¶25 | col. 11:38-42 |
| a moisture and gas impervious, structurally sound metal spacer... having a generally U-shaped cross-sectional configuration... | The infringing glass inserts are alleged to contain the patented spacer assembly, which includes the claimed metal spacer. | ¶24, ¶25 | col. 17:41-49 |
| a moisture and gas impervious sealant contacting the outer surface of the first leg of the spacer and the inner marginal edge of the first sheet... | The accused glass inserts are alleged to be infringing products, which implies they are constructed with the claimed sealant configuration. | ¶24, ¶25 | col. 17:54-65 |
Identified Points of Contention
- Evidentiary Questions: The complaint is pleaded largely "upon information and belief." A primary point of contention will be whether Plaintiff can obtain evidence in discovery to prove that Defendant’s manufacturing process and products actually meet the specific technical limitations of the claims. This includes the material composition of the spacer and sealant, the "U-shaped" geometry, and the final assembly structure.
- Technical Questions: A key technical dispute will likely center on the claimed "RES-value of at least 10." The infringement analysis will require determining if the accused products meet this quantitative threshold, which may necessitate expert testing and modeling, (’282 Patent, col. 17:9).
V. Key Claim Terms for Construction
The complaint does not provide sufficient detail for a full analysis of claim construction disputes. However, based on the technology, certain terms are likely to be central.
The Term: "RES-value of at least 10"
- Context and Importance: This quantitative performance metric is a cornerstone of the patents, defining the minimum thermal resistance for an edge assembly to be considered "warm edge." The outcome of the infringement analysis for both the method and apparatus claims may depend entirely on whether the accused products meet this numerical limitation.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states that the RES-value is "measured using ANSYS program" (’282 Patent, col. 17:8-9). A party could argue that any method of calculation or any product structure that yields a value of 10 or more under this program meets the limitation, regardless of the specific physical embodiment.
- Evidence for a Narrower Interpretation: The patent provides detailed examples of specific material compositions and dimensions for edge assemblies and their corresponding calculated RES-values (e.g., a stainless steel spacer assembly calculated at 79.1) (’282 Patent, col. 11:38-12:6). A party could argue that the term should be understood in the context of these disclosed embodiments, potentially limiting its scope to similar constructions.
The Term: "structurally sound"
- Context and Importance: This term qualifies the required mechanical properties of the spacer. Practitioners may focus on this term because its definition will determine whether a simple, flimsy spacer infringes or if a more robust component with specific functional characteristics is required.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term could be argued to mean simply that the spacer is strong enough to perform its basic function of maintaining a space between the glass sheets without collapsing under normal conditions.
- Evidence for a Narrower Interpretation: The specification provides a more specific definition, stating that "structurally sound" means the spacer "maintains the glass sheets in a spaced relationship while permitting local flexure of the glass due to changes in barometric pressure, temperature and wind load" (’282 Patent, col. 12:43-47). This language could support a narrower construction requiring not just strength, but also a degree of resilience and flexibility.
VI. Other Allegations
Indirect Infringement
The complaint alleges induced infringement, stating that Masonite induced third-party retailers to market and sell the infringing products (Compl. ¶27). It also pleads contributory infringement, alleging that the "Specialty and similar equipment" used for manufacturing has "no substantial non-infringing use" (Compl. ¶24).
Willful Infringement
The complaint alleges that Masonite's infringement was willful. This allegation is supported by claims that Masonite had actual knowledge of the technology through its payment of royalties from 2008 to 2010 for US-based manufacturing (Compl. ¶28) and was "explicitly informed" on July 21, 2011, of its need for a license for the specific patents-in-suit (Compl. ¶29).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of factual substantiation: can Plaintiff produce sufficient evidence through discovery to prove its "information and belief" allegations, specifically by demonstrating that the accused manufacturing equipment and the resulting glass inserts practice the precise technical limitations recited in the asserted claims?
- The case will likely involve a key question of quantitative infringement: does the accused edge assembly, as manufactured and sold by Masonite, achieve the "RES-value of at least 10" as required by the independent claims and as defined within the patent specifications? This may become a battle of experts.
- A third critical question will concern willfulness and damages: given the allegations of explicit pre-suit notice in 2011 and a prior history of royalty payments, the court will have to determine if Masonite's continued alleged infringement rises to the level of objective recklessness necessary to support a finding of willfulness and potential enhancement of damages.