DCT

2:24-cv-00040

Unilin BV v. Vilox Sweden Ab

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:24-cv-00040, E.D. Tex., 07/15/2024
  • Venue Allegations: Venue is alleged to be proper in the Eastern District of Texas based on Defendant East Texas Floors & More LLC maintaining a regular and established place of business in Tyler, Texas, and conducting sales within the district. For the foreign defendants, venue is alleged to be proper in any judicial district.
  • Core Dispute: Plaintiff alleges that Defendants’ luxury vinyl tile (LVT) flooring products infringe four patents related to the material composition, mechanical locking features, and manufacturing methods of floor panels.
  • Technical Context: The technology at issue concerns interlocking synthetic floor panels, a major segment of the global flooring market valued for its durability and ease of glueless installation.
  • Key Procedural History: The complaint alleges that Defendants have been aware of or willfully blind to the existence of the asserted patents since at least September 25, 2023, in connection with their awareness of a USITC investigation (Inv. No. 337-TA-1155) involving other Unilin patents. The original complaint in this matter was filed on January 24, 2024.

Case Timeline

Date Event
2006-06-02 Priority Date for ’542 and ’055 Patents
2010-05-10 Priority Date for ’949 and ’764 Patents
2018-02-13 U.S. Patent No. 9,890,542 Issues
2022-11-22 U.S. Patent No. 11,505,949 Issues
2024-01-24 Original Complaint Filing Date
2024-03-19 U.S. Patent No. 11,933,055 Issues
2024-06-18 U.S. Patent No. 12,012,764 Issues
2024-07-15 First Amended Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 9,890,542 - "Floor covering, floor element and method for manufacturing floor elements" (issued February 13, 2018)

The Invention Explained

  • Problem Addressed: Prior art interlocking floor panels with simple V-shaped locking mechanisms were allegedly prone to deformation under pressure, which could lead to gaps or vertical displacement between panels over time (’542 Patent, col. 2:50-65).
  • The Patented Solution: The invention discloses a floor element with a composite substrate and a specific mechanical locking profile. The male coupling part features a downward recess that divides it into a flexible, upwardly directed lip and a "more massive" second portion, designed to create a stable "push-lock" connection that resists deformation (’542 Patent, col. 3:12-24; Fig. 3). The locking parts themselves are formed from a "filled synthetic material composite" with specific material properties, such as a ratio of synthetic material to inorganic filling material being lower than 50:50 (’542 Patent, Claim 1).
  • Technical Importance: This design aims to enhance the long-term stability and durability of glueless interlocking flooring systems by creating a more robust mechanical connection between panels (’542 Patent, col. 1:19-27).

Key Claims at a Glance

  • The complaint asserts at least independent claim 1 (Compl. ¶51).
  • Essential elements of claim 1 include:
    • A floor element comprising a substrate and a top layer.
    • The substrate is made of a "filled synthetic material composite" which forms the coupling parts on opposite sides.
    • The composite comprises a thermoplastic material and an inorganic filling material where the ratio of synthetic to filling material is "lower than 50:50".
    • The coupling parts provide for both vertical and horizontal locking and can be connected by a turning or horizontal shifting movement.
    • The coupling parts are formed as "milled profiles".

U.S. Patent No. 11,505,949 - "Floor Panel" (issued November 22, 2022)

The Invention Explained

  • Problem Addressed: The patent background describes challenges in flooring technology, including the moisture sensitivity of wood-based substrates (like MDF/HDF) and the insufficient stiffness of early vinyl-based panels, which could allow imperfections in the subfloor to become visible on the surface (’949 Patent, col. 1:47-54, col. 2:1-15).
  • The Patented Solution: The patent claims a method for manufacturing floor panels that addresses these issues. The process involves continuously extruding a synthetic material board and then, on the same production line, adhering a printed polyvinyl chloride (PVC) film and a transparent vinyl wear layer to it (’949 Patent, col. 12:50-59). A crucial step is mechanically embossing the surface to create texture, but in a manner such that the impressions are "limited in depth to the wear layer," leaving the underlying decorative print film "undisturbed" (’949 Patent, Abstract; Claim 1).
  • Technical Importance: This manufacturing method allows for the creation of realistic surface textures that align with the printed visual (a technique often called "embossing in register") without distorting the decorative layer, thereby improving the aesthetic quality and realism of synthetic flooring (’949 Patent, col. 8:10-18).

Key Claims at a Glance

  • The complaint asserts at least independent claim 1, a method claim (Compl. ¶102).
  • Essential elements of claim 1 include:
    • A multi-step method for manufacturing panels.
    • A first step of extruding a synthetic material board.
    • Second and third steps of providing a print and a wear layer by adhering films to the board.
    • The extrusion and print-providing steps are performed "continuously on the same production line".
    • A further step of mechanically embossing the wear layer.
    • A key limitation that the PVC film with the print is "undisturbed" by the embossing, with impressions "limited in depth to the wear layer".

U.S. Patent No. 11,933,055 - "Floor covering, floor element and method for manufacturing floor elements" (issued March 19, 2024)

  • Technology Synopsis: The ’055 Patent claims a floor element with a substrate made from a filled synthetic material composite, distinguished by the requirement that both the vertical and horizontal locking portions are entirely made of this composite. The patent further defines the composite's composition by a specific weight ratio of thermoplastic material to inorganic filling material (between 50:50 and 20:80), aiming to control the material properties of the integral locking mechanism (Compl. ¶156, Claim 1).
  • Asserted Claims: Independent claim 1 (Compl. ¶156).
  • Accused Features: The material composition and integral locking profile of the Accused Products, particularly their stone-plastic composite (SPC) cores, are alleged to meet the claim limitations (Compl. ¶¶167-175).

U.S. Patent No. 12,012,764 - "Floor Panel" (issued June 18, 2024)

  • Technology Synopsis: The ’764 Patent claims a method for manufacturing a plurality of floor panels. The claimed process involves first forming a large board from a synthetic substrate with specific properties (e.g., density >450 kg/m³) and layered films, then using a "dividing operation" to obtain individual panels from this board. Crucially, the mechanical coupling parts are created via a "milling treatment" that occurs after the dividing operation (Compl. ¶208, Claim 1).
  • Asserted Claims: Independent claim 1 (Compl. ¶208).
  • Accused Features: The manufacturing process used to create the Accused Products is alleged to follow the claimed sequence of forming a large board, dividing it into planks, and subsequently milling the locking profiles (Compl. ¶¶214, 231, 234).

III. The Accused Instrumentality

Product Identification

  • The accused products are certain luxury vinyl tile (LVT) flooring products sold under brand names including "Newton Equestrian Farmhouse," "Newton Infinity Espresso," "Newton Ranger Chic," and "Newton Cosmic Cider," as well as other products incorporating VILOX's locking profile (collectively, the "Accused Products") (Compl. ¶36).

Functionality and Market Context

  • The Accused Products are described as rigid flooring panels with a stone-plastic composite ("SPC") core (Compl. ¶6). They feature interlocking mechanical profiles on their edges to allow for glueless installation (Compl. ¶43). The complaint presents the "Newton Cosmic Cider" product as an exemplary accused product, noting it is advertised as having a "High Strength SPC Core" and a "20 mil" (~0.508 mm) wear layer (Compl. ¶¶108, 114). The complaint alleges a multi-level stream of commerce where VILOX licenses the technology to manufacturer Amy Group, who in turn sells products to distributors that supply retailers like East Texas Floors (Compl. ¶35). An image from the complaint shows a cross-section of the "Newton Cosmic Cider" product, illustrating distinct locking profiles for the long and short sides of the floor panel (Compl. p. 15).

IV. Analysis of Infringement Allegations

'542 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A floor element for forming a floor covering, which, at least at a pair of opposite sides, comprises coupling parts, which are performed as a male coupling part and a female coupling part... The Accused Products are floor elements with opposite sides that include male and female coupling parts. The complaint includes a cross-section photograph of the Newton Cosmic Cider product with labels identifying the "male coupling part" and "female coupling part" (Compl. p. 19). ¶55 col. 9:55-61
...and which are provided with vertically active locking portions, which... effect a locking in vertical direction... and also are provided with horizontally active locking portions, which... effect a locking in horizontal direction... The coupling parts of the Accused Products allegedly provide both vertical and horizontal locking when two elements are connected. The complaint provides annotated images purporting to show these "vertically active locking portions" and "horizontally active locking portions" on the accused product (Compl. pp. 20-21). ¶57, ¶59 col. 9:11-24
...wherein the floor element comprises a substrate and a top layer, said substrate being made of a filled synthetic material composite... The Accused Products allegedly comprise a substrate and a top layer, with the substrate being the product's SPC core, which is alleged to be a filled synthetic material composite. ¶63, ¶65 col. 12:47-49
...wherein said filled synthetic material composite comprises a thermoplastic material and an inorganic filling material, a ratio of synthetic material to filling material being lower than 50:50... The complaint alleges on information and belief that the Newton Cosmic Cider LVT's SPC substrate is a composite of thermoplastic material and inorganic filler with a material ratio that meets this limitation. ¶67-68 col. 12:47-53
...and wherein said coupling parts are formed as milled profiles. The complaint alleges on information and belief that the coupling parts of the Accused Products are formed as milled profiles. ¶70-71 col. 12:61-62
  • Identified Points of Contention:
    • Scope Questions: A central question may be whether the accused products' SPC core constitutes a "filled synthetic material composite" as defined by the patent, specifically regarding the claimed ratio of synthetic to filling material being "lower than 50:50." The complaint makes this allegation "on information and belief," indicating this will be a point of factual discovery and potentially expert testimony.
    • Technical Questions: The claim requires the coupling parts to be "formed as milled profiles." The infringement allegation for this element is based on "information and belief" (Compl. ¶71) and will likely depend on evidence of the defendants' actual manufacturing processes obtained through discovery.

'949 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A method for manufacturing panels... a first step of extruding said synthetic material board; The complaint alleges the Accused Products' "High Strength SPC Core" is manufactured using an extrusion method. ¶108 col. 13:50-51
...wherein at least said first and said second step are performed continuously on the same production line; The complaint alleges on information and belief that the extrusion and print-providing steps for the Accused Products are performed continuously on the same production line. ¶117 col. 14:13-15
...a translucent or transparent vinyl layer having a thickness of at least 0.2 millimeters essentially forming said wear layer; The accused Newton Cosmic Cider product is advertised as having a "20 mil" (~0.508 mm) wear layer, which exceeds the 0.2 mm thickness requirement. ¶114 col. 14:1-3
...further comprising a step of mechanically embossing said wear layer; The accused Newton Cosmic Cider product is advertised as having "[b]rushed texturing," which the complaint alleges results from mechanical embossing of the wear layer. ¶123 col. 14:5-8
...wherein the polyvinyl chloride film with said print is undisturbed from the step of mechanically embossing the wear layer such that impressions formed... are limited in depth to the wear layer. The complaint alleges on information and belief that the Accused Products were made by a method where the print layer is undisturbed, with embossing impressions limited to the wear layer. A cross-sectional image is provided to support this allegation, showing impressions confined to the top surface layer (Compl. p. 36). ¶126 col. 14:6-12
  • Identified Points of Contention:
    • Evidentiary Questions: As the '949 Patent claims a method of manufacture, infringement analysis will depend on evidence of the actual process used by the manufacturer, Defendant Amy Group. The complaint's allegations are largely based on "information and belief," derived from the characteristics of the final product.
    • Scope Questions: A key dispute may arise over the term "undisturbed." The defendant could argue that its embossing process, while creating texture, is technologically distinct from the claimed method or that it necessarily causes some degree of disturbance to the underlying print layer, thereby avoiding infringement.

V. Key Claim Terms for Construction

Term from '542 Patent: "filled synthetic material composite"

  • The Term: "filled synthetic material composite"
  • Context and Importance: This term defines the core material of the patented invention's substrate and locking mechanism. The infringement analysis for the product patents ('542 and '055) will turn on whether the accused SPC core falls within the scope of this term, including its claimed material ratio.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification suggests the composite can be made with various fillers, including "chalk, wood fiber, sand and the like" (’542 Patent, col. 4:45-48), which may support a broad reading of the types of materials that qualify.
    • Evidence for a Narrower Interpretation: Claim 1 itself provides a specific quantitative limit, requiring "a ratio of synthetic material to filling material being lower than 50:50." This explicit ratio provides a clear boundary that could be used to argue for a narrower construction, excluding composites that do not meet this specific threshold.

Term from '949 Patent: "undisturbed"

  • The Term: "undisturbed from the step of mechanically embossing the wear layer"
  • Context and Importance: This term is critical to defining the patented manufacturing process. It captures the novel aspect of creating surface texture without distorting the underlying decorative print. Practitioners may focus on this term because infringement will depend on proving that the accused manufacturing process achieves this specific outcome.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent's objective of creating realistic texture (’949 Patent, col. 8:10-18) may support an interpretation where "undisturbed" means free from visually significant distortion to the printed pattern, even if microscopic changes to the print film occur.
    • Evidence for a Narrower Interpretation: The claim language further clarifies this limitation by stating that "impressions formed from the step of mechanically embossing the wear layer are limited in depth to the wear layer" (’949 Patent, Claim 1). This language could support a narrower, more technical definition requiring that the physical embossing force does not deform the PVC film itself, only the transparent wear layer above it.

VI. Other Allegations

Indirect Infringement

  • The complaint alleges both induced and contributory infringement against all Defendants for each asserted patent (e.g., Compl. ¶¶76, 89 for the '542 Patent). The allegations describe a chain of commerce, asserting that VILOX induces infringement by licensing its locking profile and providing labels and equipment; Amy Group induces and contributes by manufacturing and shipping infringing products into the U.S.; and East Texas Floors induces and contributes by selling the products to end-users (Compl. ¶¶83-97).

Willful Infringement

  • Willfulness is alleged based on both pre- and post-suit knowledge. The complaint asserts that Defendants had knowledge of the infringement at least as of the filing of the original complaint on January 24, 2024 (Compl. ¶77). It further alleges pre-suit knowledge, stating that VILOX had "confirmed that they carefully reviewed Unilin's patent portfolio" prior to the complaint and that Defendants were aware of a related USITC investigation involving Unilin patents since at least September 25, 2023 (Compl. ¶¶78, 81).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A central issue for the product-focused patents ('542 and '055) will be one of material and structural definition: does the "stone-plastic composite" used in the Accused Products meet the specific compositional ratios and structural limitations (e.g., locking portions being "entirely made of" the composite) required by the claims? This question will likely involve detailed claim construction and competing expert analyses of the accused products' physical makeup.
  • For the process-focused patents ('949 and '764), a key question will be one of evidentiary proof of manufacture: what evidence can Plaintiff obtain through discovery to demonstrate that the Accused Products, manufactured in Vietnam, were made using the specific, sequential steps claimed in the patents? The case may turn on whether the actual manufacturing process aligns with claim limitations such as the "undisturbed" print layer and the sequence of "dividing" before "milling."