DCT
2:20-cv-00298
US Silica Co v. Amberger Kaolinwerke Eduard Kick GmbH & Co KG
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: U.S. Silica Company (Delaware)
- Defendant: Amberger Kaolinwerke Eduard Kick GmbH & Co. KG (Germany)
- Plaintiff’s Counsel: Beck Redden LLP; The Webb Law Firm
- Case Identification: 2:20-cv-00298, E.D. Tex., 08/16/2021
- Venue Allegations: Venue is alleged to be proper because Defendant is a foreign entity. Personal jurisdiction is alleged based on Defendant’s sales of the accused product to a Texas-based company and marketing activities at a trade show in Dallas, Texas.
- Core Dispute: Plaintiff alleges that Defendant’s "AKCool" roofing granules and their use in roofing systems infringe six patents related to highly reflective "cool roof" technology.
- Technical Context: The technology concerns "cool roofing" materials, which use highly reflective granules to reflect solar energy, thereby reducing building heat absorption and improving energy efficiency.
- Key Procedural History: The complaint alleges a prior business relationship where Defendant manufactured Plaintiff’s patented "White Armor" product for Plaintiff and its predecessor, National Coatings Corporation. The suit alleges that after this relationship ended, Defendant launched the accused AKCool product as a copy. The complaint also notes that Defendant cited the application for one of the patents-in-suit during the prosecution of its own patent, which may be relevant to the issue of knowledge for willfulness.
Case Timeline
| Date | Event |
|---|---|
| 2009-10-02 | Earliest Priority Date (’303, ’407, ’512, ’115, ’245 Patents) |
| 2014-10-21 | U.S. Patent No. 8,865,303 Issues |
| 2016-04-05 | U.S. Patent No. 9,303,407 Issues |
| 2016-08-29 | Earliest Priority Date (’493 Patent) |
| 2017-04-XX | U.S. Silica acquires National Coatings' cool roofing division |
| 2017-07-25 | U.S. Patent No. 9,714,512 Issues |
| 2018-12-04 | U.S. Patent No. 10,145,115 Issues |
| 2019-04-09 | U.S. Patent No. 10,253,493 Issues |
| 2020-01-XX | Alleged first sales/importation of Accused Product (AKCool) |
| 2020-07-28 | U.S. Patent No. 10,724,245 Issues |
| 2021-08-16 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,865,303 - "Highly Reflective Roofing System"
- Patent Identification: U.S. Patent No. 8865303, "Highly Reflective Roofing System," issued October 21, 2014.
The Invention Explained
- Problem Addressed: The patent addresses the problem of conventional dark roofing materials, like asphalt, absorbing significant solar heat, which increases building cooling costs and energy consumption. It notes that commercially available roofing granules were not bright enough to meet increasingly stringent energy regulations, such as California's Title 24 requirement for a minimum 70% solar reflectance (’303 Patent, col. 1:24-42).
- The Patented Solution: The invention is a "cool roofing system" that achieves high solar reflectance by using a specific type of granule. The system comprises an asphalt layer topped with a granular layer of highly reflective, calcined kaolin particles, which are treated with a clear coating. These specific particles, which have a solar reflectance of 80% to 92% on their own, enable the entire roofing system to meet or exceed the 70% reflectance standard when applied to a dark asphalt substrate (’303 Patent, Abstract; col. 2:40-51).
- Technical Importance: This technology provided a method for common, dark-colored roofing materials to comply with "cool roof" energy efficiency standards, a significant issue for the construction industry (Compl. ¶¶24-27).
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claims 9 and 10 (Compl. ¶42).
- Independent Claim 1 requires:
- A cool roofing system comprising at least one asphalt layer and at least one granular layer directly adhered to a top surface of the asphalt layer.
- The granular layer comprises a plurality of highly reflective, calcined, bright white crushed kaolin particles.
- The particles have a solar reflectance from about 80% to about 92% prior to any surface treatment and a particle size from about 0.3 mm to about 2.4 mm.
- The particles have a surface treatment consisting of a clear coating.
- When applied, the treated particles result in a system with a resultant reflectance between about 70-82%.
- The clear coating is selected from a specified group of chemicals (silanes, siloxanes, acrylics, etc.).
U.S. Patent No. 10,253,493 - "Particulates Having High Total Solar Reflectance"
- Patent Identification: U.S. Patent No. 10253493, "Particulates Having High Total Solar Reflectance," issued April 9, 2019.
The Invention Explained
- Problem Addressed: The patent background describes the general problem of solar heat absorption by roofs, which leads to uncomfortable interior conditions and increased energy costs for artificial cooling (’493 Patent, col. 1:5-26).
- The Patented Solution: Rather than claiming a roofing system, this invention claims the reflective particulate itself as a specific composition of matter. The solution is a particulate mixture comprising three core components: (1) a particulate substrate (e.g., feldspar and/or sand), (2) a hardness enhancer (e.g., Plaster of Paris), and (3) a pigment comprising a clay. This mixture is heat-treated and then finished with a hydrophobic exterior coating to provide weather resistance (’493 Patent, Abstract; col. 2:30-40).
- Technical Importance: This patent claims a specific "recipe" for creating a durable, highly reflective granule, suggesting an attempt to optimize performance and manufacturing through a multi-component formulation rather than relying on the properties of a single base material (Compl. ¶30; ’493 Patent, col. 3:45-55).
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claims 2-3, 5, 8, 10-12, and 16 (Compl. ¶42).
- Independent Claim 1 requires:
- A reflective particulate composition.
- Comprising a particulate mixture which includes: a particulate substrate (feldspar and/or sand), a hardness enhancer, and a pigment comprising a clay.
- The particulate substrate is present in an amount greater than the pigment.
- The composition includes a hydrophobic exterior coating on the particulate mixture.
Multi-Patent Capsules
- U.S. Patent No. 9,303,407: "Highly Reflective Roofing System," issued April 5, 2016. This patent is a continuation of the '303 Patent. It claims a cool roofing system comprising an asphalt layer and a granular layer of surface-treated, bright white crushed kaolin particles, where the coating improves adherence ('407 Patent, Claim 1). The complaint asserts claims 1, 3, 9, and 10 (Compl. ¶42), accusing the AKCool system of infringement (Compl. ¶¶70-76).
- U.S. Patent No. 9,714,512: "Highly Reflective Roofing System," issued July 25, 2017. This patent is a continuation from the same family. It claims a cool roofing system using crushed kaolin chamotte particles with a surface treatment consisting of a clear coating selected from a specific chemical group ('512 Patent, Claim 1). The complaint asserts claims 1 and 3 (Compl. ¶42), accusing the AKCool system of infringement (Compl. ¶¶83-89).
- U.S. Patent No. 10,145,115: "Highly Reflective Roofing System," issued December 4, 2018. This patent is a further continuation in the family. It claims a cool roofing system with a top-most granular layer of crushed kaolin chamotte particles having a surface treatment consisting of a clear coating selected from a specified chemical group ('115 Patent, Claim 1). The complaint asserts claims 1-3 and 5 (Compl. ¶42), accusing the AKCool system of infringement (Compl. ¶¶96-102).
- U.S. Patent No. 10,724,245: "Highly Reflective Roofing System," issued July 28, 2020. This patent, also a continuation, is distinguished by claiming a cool roofing system with calcined kaolin particles that do not have a surface treatment ('245 Patent, Claim 1). The complaint asserts claims 1-3 (Compl. ¶42) against "Untreated AKCool" granules (Compl. ¶110).
III. The Accused Instrumentality
Product Identification
- The accused product is a cool roofing granule marketed and sold by Defendant under the name "AKCool" (Compl. ¶8). The complaint also makes allegations against "Untreated AKCool" in relation to the '245 Patent (Compl. ¶110).
Functionality and Market Context
- The complaint alleges, based on Defendant's marketing materials, that AKCool granules are "specially developed for bitumen mineral cap sheets used on roofs" (Compl. ¶45). Their function is to provide high solar reflectance, with Defendant's materials allegedly claiming a reflectance value of ~84% for the granules alone and over 70% when applied to a bitumen sheet (Compl. ¶46). The granules are also described as being "coated to repel water and oil" and having "perfect adhesion to bitumen surface" (Compl. ¶¶45-46). A screenshot from Defendant's brochure lists features such as "Completely reflective (due to reflective core material)" and "Minimum staining thanks to highly hydrophobic and oleophobic surface" (Compl. p. 14, Image). The complaint alleges that Defendant has sold and imported over 50 metric tons of AKCool into the United States to roofing system manufacturers (Compl. ¶52).
IV. Analysis of Infringement Allegations
U.S. Patent No. 8,865,303 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A cool roofing system comprising: at least one asphalt layer; and at least one granular layer directly adhered to a top surface of the asphalt layer... | The accused instrumentality is the cool roofing system created when AKCool granules are applied to an asphalt or bitumen layer, as instructed by Defendant. | ¶41; ¶48 | col. 5:5-8 |
| ...the granular layer...comprising a plurality of highly reflective, calcined, bright white crushed kaolin particles having a solar reflectance ranging from about 80% to about 92%... | The AKCool granules are alleged to be manufactured with a "majority of kaolin clay," prepared by "calcining at a high temperature," and have a claimed "pure" solar reflectance of ~84%. | ¶46; ¶47 | col. 2:40-51 |
| ...wherein the highly reflective...crushed kaolin particles have a surface treatment consisting of a clear coating... | The complaint alleges that AKCool granules are "coated to repel water and oil," which "implies a clear coating." | ¶45 | col. 6:41-47 |
| ...when the highly reflective calcined, surface treated, bright white crushed kaolin particles are applied to the asphalt layer...the highly reflective...particles have a resultant reflectance between about 70-82%... | When applied to a bitumen sheet, AKCool allegedly "provides reflectance values greater than 70%." | ¶46 | col. 5:15-21 |
- Identified Points of Contention:
- Technical Question: The complaint alleges the AKCool granules are "coated to repel water and oil," which it claims "implies a clear coating" as required by the claim. A potential point of dispute is whether the coating on AKCool is factually a "clear coating" and whether it is a "surface treatment" within the meaning of the patent.
- Scope Question: The claim recites "crushed kaolin particles." The infringement analysis may focus on whether AKCool granules, alleged to be made from a "majority of kaolin clay," meet the specific structural and compositional identity of the claimed particles as understood from the patent's specification.
U.S. Patent No. 10,253,493 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A reflective particulate composition, comprising: a particulate mixture comprising: a particulate substrate comprising a feldspar and/or a sand... | The complaint alleges direct infringement by Defendant's importation and sale of the AKCool granules themselves, which are alleged on information and belief to be "virtually identical" to Plaintiff's product and to contain the claimed components. | ¶47; ¶123 | col. 4:65-6 |
| ...a hardness enhancer... | The complaint's allegation that AKCool contains a "hardness enhancer" is based on the assertion that its composition is "virtually identical" to Plaintiff's patented product and by reference to Defendant's own patent documents. | ¶38; ¶47 | col. 5:46-52 |
| ...and a pigment comprising a clay... | The AKCool granules are alleged to include "a majority of kaolin clay." | ¶47 | col. 6:8-14 |
| ...and a hydrophobic exterior coating on the particulate mixture. | Defendant's marketing materials state AKCool is "coated to repel water and oil" and has a "highly hydrophobic and oleophobic surface." Marketing images depict the product being applied to roofing rolls. | ¶45; ¶49, Image; ¶50, Image | col. 8:10-14 |
- Identified Points of Contention:
- Evidentiary Question: The complaint's allegations for direct infringement of the '493 Patent appear to rely heavily on "information and belief" and an assertion that AKCool is "virtually identical" to Plaintiff's product (Compl. ¶47). A primary point of contention will be an evidentiary one: what is the actual, provable chemical composition of the commercial AKCool granules, and does it contain a "particulate substrate comprising a feldspar and/or a sand" and a "hardness enhancer" as required by claim 1?
- Functional Question: The term "hardness enhancer" is functional. The dispute may turn on whether a component in AKCool, even if present, actually performs the function of enhancing hardness as contemplated by the patent, or if its primary function is something else.
V. Key Claim Terms for Construction
For U.S. Patent No. 8,865,303
- The Term: "surface treatment consisting of a clear coating" (Claim 1)
- Context and Importance: The presence and nature of a surface treatment is a critical distinction within the asserted patent family, as the '245 Patent claims granules without a surface treatment. The infringement reading for the '303 patent hinges on proving AKCool has a coating that falls within this term's scope.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes that particles "can be coated and/or their surfaces treated for any number of reasons including dust control, to enhance and/or increase water repellency and to prevent various kinds of staining" ('303 Patent, col. 6:41-47). A party could argue this supports a broad, functional definition covering any clear layer that provides such benefits.
- Evidence for a Narrower Interpretation: The specification provides an exemplary list of compounds for the coating, including "silanes, siloxanes, polysiloxanes, organo-siloxanes, silicates..." and others ('303 Patent, col. 6:50-60). A party could argue the term should be limited to these classes of materials or to coatings that achieve their function through similar chemical means.
For U.S. Patent No. 10,253,493
- The Term: "a hardness enhancer" (Claim 1)
- Context and Importance: This term is central to the '493 patent's composition claim. Because the complaint's allegations regarding this element are not based on direct analysis of the accused product, the definition of this term will be critical to proving infringement. Practitioners may focus on this term because proving a component of AKCool meets this definition appears to be a key challenge for the plaintiff.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term itself is functional and not explicitly defined. A patentee might argue that it should be given its plain and ordinary meaning, covering any component added to the mixture that results in increased hardness of the final particulate.
- Evidence for a Narrower Interpretation: The specification provides a list of examples: "Plaster of Paris...Epsom salt, aplite, calcium carbonate, magnesium carbonate, and/or sodium carbonate" ('493 Patent, col. 5:48-52). A defendant would likely argue that this list limits the scope of the term to the disclosed examples and their close equivalents, potentially excluding other substances that might incidentally increase hardness.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement for the five "Sexauer Patents" ('303, '407, '512, '115, '245). The inducement theory is based on Defendant allegedly instructing and encouraging its customers, through marketing materials and sales efforts, to apply the AKCool granules to an asphalt layer, thereby creating the infringing roofing systems (Compl. ¶¶58, 71). The contributory infringement theory is based on the allegation that AKCool granules are a material part of the invention, are not staple articles of commerce, and have no substantial non-infringing use (Compl. ¶¶65, 78).
- Willful Infringement: Willfulness is alleged for all six patents. The allegations are based on Defendant's alleged pre-suit knowledge of the patents stemming from its prior business relationship as the manufacturer of the patented "White Armor" product for Plaintiff's predecessor (Compl. ¶55). The complaint further alleges that Defendant had actual knowledge because it cited the published application corresponding to the '303 Patent during the prosecution of its own '974 patent (Compl. ¶39).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of evidentiary proof: For the '493 patent, which is asserted via direct infringement of the granule composition itself, can the Plaintiff produce sufficient evidence to demonstrate that the accused AKCool product actually contains every element of the claimed composition, particularly the "particulate substrate" and "hardness enhancer" which are alleged largely on information and belief?
- A second key issue will be one of claim construction and scope: For the Sexauer family of patents, the outcome may turn on how the court construes the term "surface treatment consisting of a clear coating" ('303 patent) and whether the hydrophobic/oleophobic layer on the AKCool product falls within this definition, especially in light of a related patent ('245 patent) that explicitly claims an untreated granule.
- Finally, a critical question for damages will be one of intent: Given the complaint’s detailed allegations of a prior manufacturing relationship and Defendant’s explicit citation to Plaintiff’s patent application, the court will need to determine if Defendant’s alleged infringement was willful, which could expose it to treble damages.