DCT
2:18-cv-00530
Huber Engineered Woods LLC v. Martco LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Huber Engineered Woods LLC (Delaware)
- Defendant: Martco L.L.C. (Louisiana) and Corrigan OSB, L.L.C. (Texas)
- Plaintiff’s Counsel: Merchant & Gould P.C.; Ward, Smith & Hill, PLLC
- Case Identification: 2:18-cv-00530, E.D. Tex., 12/07/2018
- Venue Allegations: Venue is alleged in the Eastern District of Texas based on Defendants having committed acts of infringement and maintaining regular and established places of business in the District, specifically the manufacturing plant operated by Corrigan OSB in Corrigan, Texas.
- Core Dispute: Plaintiff alleges that Defendants’ Eclipse™ Weather Resistant Barrier products, which consist of structural sheathing panels and seam tape, infringe seven patents related to integrated structural sheathing systems.
- Technical Context: The technology concerns engineered wood panels for building construction that incorporate a water-resistant yet vapor-permeable barrier layer, intended to streamline construction by eliminating the separate step of applying house wrap.
- Key Procedural History: The complaint notes that Plaintiff previously sued Georgia-Pacific Wood Products LLC on two of the patents-in-suit ('197 and '044), resulting in a settlement and license agreement. Plaintiff alleges this prior litigation and its coverage in industry publications are relevant to Defendants' knowledge.
Case Timeline
| Date | Event |
|---|---|
| 2004-02-23 | Earliest Priority Date for all Patents-in-Suit ('197, '044, '479, '159, '588, '140, '415) |
| 2007-01-01 | Plaintiff's ZIP System® Sheathing first sold (approximate date) |
| 2013-07-02 | U.S. Patent No. 8,474,197 Issued |
| 2015-04-21 | U.S. Patent No. 9,010,044 Issued |
| 2017-01-17 | U.S. Patent No. 9,546,479 Issued |
| 2017-06-27 | U.S. Patent No. 9,689,159 Issued |
| 2017-07-04 | U.S. Patent No. 9,695,588 Issued |
| 2017-07-11 | U.S. Patent No. 9,702,140 Issued |
| 2018-09-11 | U.S. Patent No. 10,072,415 Issued |
| 2018-12-07 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,474,197 - Panel for Sheathing System and Method, issued July 2, 2013
The Invention Explained
- Problem Addressed: The patent's background describes the conventional, multi-step process for weatherizing buildings, which involves first installing structural panels and then separately applying a water-resistant barrier like felt paper or house wrap. This process is described as time-consuming, difficult in windy conditions, and can result in slick, unsafe surfaces when wet (’197 Patent, col. 1:45-2:67).
- The Patented Solution: The invention is a structural sheathing system composed of lignocellulosic panels (e.g., Oriented Strand Board or OSB) that have a water-resistant barrier layer integrated directly onto their surface during manufacturing. This barrier is designed to be "bulk water resistant" to shed rain but also "substantially water vapor permeable" to allow moisture vapor to escape from the wall cavity, preventing rot or mold. The system is completed by sealing the joints between adjacent panels with a "bulk water resistant edge sealant," such as tape, to form a continuous, weather-proof envelope around the structure (’197 Patent, Abstract; col. 3:1-13; Fig. 1).
- Technical Importance: This integrated panel system was designed to streamline and simplify the building weatherization process by combining two separate installation steps (structural sheathing and water barrier) into a single step (Compl. ¶19).
Key Claims at a Glance
- The complaint asserts at least independent claims 1 and 12 (Compl. ¶29).
- The essential elements of independent claim 1 include:
- A panel system comprising at least two adjacent lignocellulosic panels aligned to define a longitudinal joint.
- A barrier layer secured to a surface of each panel, with the barrier layer being substantially bulk water resistant and substantially water vapor permeable.
- A bulk water resistant edge sealant for sealing the joint between the panels.
U.S. Patent No. 9,010,044 - Panel for Sheathing System and Method, issued April 21, 2015
The Invention Explained
- Problem Addressed: The '044 Patent, part of the same family as the '197 Patent, addresses the same technical problem of inefficient, labor-intensive, and potentially unsafe multi-step weatherization processes in building construction (’044 Patent, col. 1:44-2:67).
- The Patented Solution: The patent describes the same core technological solution: a system of structural panels with a pre-applied barrier layer that is both water-resistant and vapor-permeable. The system relies on sealing the seams between these panels with a sealant to complete the building envelope, thereby eliminating the need for a separate house wrap layer (’044 Patent, Abstract; col. 3:4-14).
- Technical Importance: This patent represents a continuation of the patented technology aimed at creating a single-step structural sheathing and weather-resistive barrier system (Compl. ¶18).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶39).
- The essential elements of independent claim 1 are substantively identical to claim 1 of the '197 Patent, including:
- A panel system with at least two adjacent lignocellulosic panels defining a joint.
- A secured barrier layer that is substantially bulk water resistant and substantially water vapor permeable.
- A bulk water resistant edge sealant for sealing the joint.
U.S. Patent No. 9,546,479 - Panel for Sheathing System and Method, issued January 17, 2017
- Technology Synopsis: Continuing the same technology, this patent describes a structural sheathing system where lignocellulosic panels are manufactured with an integrated, water-resistant, and vapor-permeable barrier layer (’479 Patent, Abstract). The system is designed to provide a complete weatherized building envelope once the seams between adjacent panels are sealed, eliminating the need for traditional house wrap (Compl. ¶18).
- Asserted Claims: Independent claims 1 and 20 (Compl. ¶51).
- Accused Features: The Eclipse™ Weather Resistant Barrier product, comprising integrated OSB panels and seam tape, is alleged to embody the claimed system (Compl. ¶¶51, 55).
U.S. Patent No. 9,689,159 - Panel for Sheathing System and Method, issued June 27, 2017
- Technology Synopsis: This patent also relates to a system of structural panels with a pre-applied, water-resistant, and vapor-permeable barrier layer (’159 Patent, Abstract). The invention aims to streamline construction by combining the structural and weather-barrier functions into a single product, completed by sealing the joints between panels (Compl. ¶18).
- Asserted Claims: Independent claims 1, 10, and 15 (Compl. ¶63).
- Accused Features: The Eclipse™ Weather Resistant Barrier panel and tape system is accused of infringing by providing the claimed panel system (Compl. ¶¶63, 67).
U.S. Patent No. 9,695,588 - Panel for Sheathing System and Method, issued July 4, 2017
- Technology Synopsis: This patent describes a building structure that incorporates the patented sheathing system, focusing on the combination of a frame structure, the structural panels with the integrated barrier layer, and a seam sealant over the joints (’588 Patent, Abstract). The technology provides a complete structural and weather-resistive system without a separate house wrap layer (Compl. ¶18).
- Asserted Claims: Independent claims 1 and 10 (Compl. ¶75).
- Accused Features: The use of the Eclipse™ Weather Resistant Barrier product in construction is alleged to create the infringing building structure (Compl. ¶¶75, 79).
U.S. Patent No. 9,702,140 - Panel for Sheathing System and Method, issued July 11, 2017
- Technology Synopsis: This patent also claims a method for constructing a building structure using the patented panel system (’140 Patent, Abstract). It covers the steps of fastening the panels with their integrated barrier layers to a frame and then applying a sealant to the joints, thereby creating a weather-resistant envelope (Compl. ¶18).
- Asserted Claims: Independent claims 1 and 10 (Compl. ¶87).
- Accused Features: The marketing and instructions for the Eclipse™ product, which direct users to install it in a manner that allegedly performs the claimed method steps, form the basis of the infringement allegation (Compl. ¶¶90, 93).
U.S. Patent No. 10,072,415 - Panel for Sheathing System and Method, issued September 11, 2018
- Technology Synopsis: This patent claims a structural panel consisting essentially of a wood composite panel (like OSB) and a bulk water-resistant barrier layer secured to its surface with an adhesive, where the panel has specific water vapor transmission and/or permeance properties (’415 Patent, claim 11). This focuses on the properties of the panel itself as a component of the larger system (Compl. ¶18).
- Asserted Claims: Independent claims 1, 8, 11, and 16 (Compl. ¶98).
- Accused Features: The Eclipse™ Weather Resistant Barrier panels are alleged to have the composition and functional properties recited in the claims (Compl. ¶98).
III. The Accused Instrumentality
Product Identification
The accused instrumentality is Defendants' Eclipse™ Weather Resistant Barrier product, which is alleged to be sold as a system comprising "weather resistant barrier panels and seam tape" (Compl. ¶22).
Functionality and Market Context
The complaint alleges the Eclipse™ panels are structural OSB wall panels with an "integrated water-resistant barrier that is also water vapor permeable" (Compl. ¶22). The system includes a "RoyOMartin-approved 5-inch woven reflective tape" used to create a "water-resistant seal between adjoining Eclipse™ panels" (Compl. ¶¶22-23; Compl. Ex. J at 1). A product description from Defendants’ marketing literature highlights the components of the accused system as a "weather resistant barrier OSB panel" and an "approved...tape" (Compl. ¶23, Ex. J at 1). The product is described as a "tape-and-panel solution" designed for applications requiring a structural panel, such as exterior walls (Compl. ¶23, Ex. J at 1). The complaint positions the accused product as a direct competitor to Plaintiff's ZIP System® Sheathing, intended to compete in the market for integrated sheathing systems (Compl. ¶¶21, 23).
IV. Analysis of Infringement Allegations
8,474,197 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| at least two adjacent lignocellulosic panels, each panel including an outer surface, an inner surface, and at least one edge extending therebetween, each panel aligned ... defining a longitudinal joint | The Eclipse™ product is a system of structural OSB panels used to sheath the exterior walls of buildings, where panels are placed adjacent to one another. | ¶¶22, 27 | col. 21:51-56 |
| a barrier layer secured to the outer surface or the inner surface of each panel, the barrier layer being substantially bulk water resistant and substantially water vapor permeable | The Eclipse™ panels are described as having an integrated "weather resistant barrier" that is "water-resistant" and also "water vapor permeable." | ¶22 | col. 21:57-60 |
| a bulk water resistant edge sealant sealing the joint between the proximate edges of the two adjacent panels. | The system includes seam tape ("RoyOMartin-approved 5-inch woven reflective tape") used to create a "water-resistant seal between adjoining Eclipse™ panels." | ¶¶22, 27 | col. 21:61-64 |
9,010,044 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| at least two adjacent lignocellulosic panels, each panel including an outer surface, an inner surface, and at least one edge extending therebetween, each panel aligned ... defining a longitudinal joint | The Eclipse™ product is a system of structural OSB panels used to sheath the exterior walls of buildings, where panels are placed adjacent to one another. | ¶¶22, 39 | col. 21:51-56 |
| a barrier layer secured to the outer surface or the inner surface of each panel, the barrier layer being substantially bulk water resistant and substantially water vapor permeable | The Eclipse™ panels are described as having an integrated "weather resistant barrier" that is "water-resistant" and also "water vapor permeable." | ¶22 | col. 21:57-60 |
| a bulk water resistant edge sealant sealing the joint between the proximate edges of the two adjacent panels. | The system includes seam tape ("RoyOMartin-approved 5-inch woven reflective tape") used to create a "water-resistant seal between adjoining Eclipse™ panels." | ¶¶22, 39 | col. 21:61-63 |
Identified Points of Contention
- Scope Questions: The dispute may center on the scope of the functional limitations "substantially bulk water resistant" and "substantially water vapor permeable." The parties may contest the degree of performance required to meet these claim terms, which could necessitate expert testimony and empirical testing of the accused product's water holdout and vapor transmission rates.
- Technical Questions: A potential point of contention could be whether the accused system's "woven reflective tape" meets all the limitations of a "bulk water resistant edge sealant" as construed from the patent claims and specification. The complaint relies on marketing descriptions, but the technical function and composition of the tape compared to the patent's teachings will be subject to scrutiny.
V. Key Claim Terms for Construction
The Term: "barrier layer"
- Context and Importance: The definition of "barrier layer" is foundational to the infringement analysis. Whether this term encompasses any water-resistant coating applied to a panel or is limited to specific types of layers disclosed in the specification (e.g., paper-based overlays) will be critical.
- Intrinsic Evidence for a Broader Interpretation: The claim language itself is broad, requiring only that the layer be "secured to the outer surface or the inner surface" and possess certain functional properties (’197 Patent, col. 21:57-60). This may support a construction covering a wide range of materials and application methods.
- Intrinsic Evidence for a Narrower Interpretation: The detailed description repeatedly discusses specific embodiments, such as a "resin-impregnated paper" (’197 Patent, col. 6:30-31), and provides significant detail on its composition and properties. A defendant may argue that these specific disclosures limit the scope of the broader claim term.
The Term: "substantially water vapor permeable"
- Context and Importance: This term sets the technical standard for a key function of the invention. Its construction will determine the benchmark against which the accused product's performance is measured. Practitioners may focus on this term because infringement will hinge on whether the accused product's vapor transmission rate falls within the scope of "substantially."
- Intrinsic Evidence for a Broader Interpretation: The term "substantially" is inherently a term of degree, suggesting a functional scope that is not necessarily confined to a precise numerical range but rather what one of ordinary skill in the art would understand as sufficient to prevent moisture buildup.
- Intrinsic Evidence for a Narrower Interpretation: The specification provides specific quantitative performance data, such as a "water vapor permeance in a range from about 0.1 U.S. perms to about 12 U.S. perms" (’197 Patent, col. 6:58-63). A defendant may argue these figures define the otherwise ambiguous term "substantially."
VI. Other Allegations
- Indirect Infringement: The complaint alleges both contributory and induced infringement for all asserted patents. The factual basis for these allegations is that Defendants sell the Eclipse™ panels and seam tape together with marketing materials and installation instructions that allegedly direct customers, such as home builders, to combine the components in a way that directly infringes the claimed systems and methods (e.g., Compl. ¶¶32, 34). The complaint further alleges that the product is not a staple article of commerce with substantial non-infringing uses (e.g., Compl. ¶32).
- Willful Infringement: Willfulness is alleged for all patents-in-suit. The complaint bases this on constructive notice through Plaintiff's patent marking and alleges likely pre-suit knowledge based on Defendants' position in the industry and the public coverage of Plaintiff's prior lawsuit and settlement against Georgia-Pacific on related patents (e.g., Compl. ¶¶30, 37). Actual notice is also alleged from the date of service of the complaint (e.g., Compl. ¶30).
VII. Analyst’s Conclusion: Key Questions for the Case
- A key evidentiary question will be one of functional performance: does testing of the accused Eclipse™ product demonstrate that its integrated barrier and seam tape meet the claimed functional requirements of being "substantially bulk water resistant" and "substantially water vapor permeable" as these terms are defined by the court? The outcome may depend heavily on competing expert analyses of the products' technical specifications and performance data.
- A core issue will be one of claim construction: how will the court define the scope of key terms like "barrier layer" and the functional term "substantially"? Whether these terms are given a broad, functional meaning or are narrowed by the specific embodiments and numerical ranges disclosed in the patent specifications will be a central point of legal argument.
- A significant factual question relevant to damages will be pre-suit knowledge: can Plaintiff establish that Defendants had knowledge of the patents prior to the lawsuit based on circumstantial evidence, such as industry publications covering Plaintiff’s prior litigation against a major competitor? The answer will be critical to the claim for willful infringement and potential enhanced damages.