DCT
4:23-cv-00202
Sqip LLC v. Cambria Co LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Sqip, LLC (Florida)
- Defendant: Cambria Company, LLC (Minnesota)
- Plaintiff’s Counsel: Scheef & Stone Solid Counsel
- Case Identification: 4:23-cv-00202, E.D. Tex., 04/25/2023
- Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas because Defendant maintains regular and established places of business in the district, including facilities and showrooms, and has purposefully directed infringing activities into the district.
- Core Dispute: Plaintiff alleges that Defendant’s engineered quartz slab products are manufactured using processes that infringe patents related to methods for creating aesthetic veins and patterns in the slabs.
- Technical Context: The technology addresses methods for manufacturing engineered stone, such as quartz countertops, to create complex, random-looking vein patterns that mimic the appearance of natural stone like marble.
- Key Procedural History: The complaint alleges a history of interaction between the parties, stating Defendant was aware of the '516 Patent by February 2018 and the '912 Patent by December 2021. It further alleges Defendant previously relied on the '516 Patent in separate litigation against one of Plaintiff's licensees and that Defendant unsuccessfully sought to license the patents-in-suit from Plaintiff on at least two occasions.
Case Timeline
| Date | Event |
|---|---|
| 2014-09-25 | '516 Patent - Earliest Priority Date |
| 2016-12-06 | '516 Patent - Issue Date |
| 2018-01-02 | '912 Patent - Earliest Priority Date |
| 2018-02-28 | Cambria allegedly aware of '516 Patent |
| 2019-08-13 | '912 Patent - Issue Date |
| 2021-02-28 | Cambria allegedly relies on '516 Patent in lawsuit |
| 2021-12-31 | Cambria allegedly aware of '912 Patent |
| 2021-12-31 | Cambria allegedly first seeks license to patents |
| 2022-09-22 | Cambria allegedly seeks license a second time |
| 2023-04-25 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,511,516 - "Method and Apparatus for Manufacturing Quartz Slab"
(Issued December 6, 2016)
The Invention Explained
- Problem Addressed: The patent’s background section notes that a perceived drawback of engineered quartz stone is its "lack of natural, random looking veins and color patterns" when compared to natural stones like marble and granite ('516 Patent, col. 1:44-48).
- The Patented Solution: The invention describes a method for creating these patterns by using a computer processor to controllably supply a quartz and resin mixture into a mold. The process involves depositing the mixture through a "first region" of the mold's top opening during a "first state," and then through a "second region" of the opening during a "second state," creating distinct, non-overlapping veins within the final slab ('516 Patent, Abstract; col. 2:61-68).
- Technical Importance: This automated, region-specific deposition method provides a way to manufacture engineered stone with complex aesthetics that more closely resemble high-value natural stone ('516 Patent, col. 1:48-51).
Key Claims at a Glance
- The complaint asserts independent claim 14 (Compl. ¶35).
- The essential elements of independent claim 14 are:
- supplying a first mixture of quartz and resin to an inner chamber of a mold;
- wherein the mold has a top opening and four walls and a bottom enclosing the inner chamber;
- using a computer processor to controllably supply the first mixture to the inner chamber through a first region of the top opening but not through a second region during a first state; and
- using the computer processor to controllably supply the first mixture to the inner chamber through the second region of the top opening but not through the first region during a second state.
U.S. Patent No. 10,376,912 - "Apparatus and Method for Depositing Color Into Cracks of a Moving Formed Quartz Slab To Create Veins in an Engineered Stone"
(Issued August 13, 2019)
The Invention Explained
- Problem Addressed: Similar to the '516 Patent, this invention seeks to address the "perceived lack of natural, random looking veins and color patterns" in engineered stone ('912 Patent, col. 1:63-col. 2:2).
- The Patented Solution: This patent discloses a mechanical method for creating veins. The process involves taking a soft, damp, and slightly pressed slab and using a device, such as a lift bar, to apply force from below, causing a portion of the slab to move vertically and introduce a crack ('912 Patent, Abstract; col. 4:1-9). While the crack is held open, a colored material is deposited into it from above, forming a vein ('912 Patent, col. 15:23-28). This can be repeated with multiple devices to form complex patterns ('912 Patent, Fig. 1).
- Technical Importance: This method provides a different technical pathway to create aesthetic veins, relying on controlled mechanical deformation and subsequent coloration of an uncured slab ('912 Patent, col. 2:1-4).
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claim 3 (Compl. ¶51, 53).
- The essential elements of independent claim 1 are:
- causing a first portion of a slab to move vertically out of alignment, introducing a first crack by using a first device to apply force to the slab;
- depositing a first colored material into the first crack to form a vein;
- wherein the force is applied from below the slab, and the material is deposited from above the slab; and
- wherein the device continues to apply the force while the material is deposited.
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are "Cambria engineered quartz slab products" identified in Exhibit 3 of the complaint and referred to as the "Accused Products" (Compl. ¶6, 22). The specific product names are listed in an exhibit not included in the provided court filing.
Functionality and Market Context
The complaint alleges the Accused Products are manufactured using processes that practice the claimed methods (Compl. ¶23, 24). For the '516 Patent, this involves a process of controllably depositing a quartz and resin mixture into a mold to create partial veins (Compl. ¶38, 41-42). For the '912 Patent, the complaint alleges the process involves creating "randomized cracks" in a damp slab by applying pressure from below and then depositing a colorizing material into those cracks (Compl. ¶60). The complaint characterizes Cambria as a major "family-owned company" in the countertop industry that provides "the highest quality natural quartz surfaces" (Compl. p. 3, visual).
IV. Analysis of Infringement Allegations
'516 Patent Infringement Allegations
| Claim Element (from Independent Claim 14) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| supplying a first mixture of quartz and resin to an inner chamber of a mold; | Defendant’s process allegedly supplies a mixture of quartz and resin to a mold. This is supported by reference to Defendant's own '942 Patent, which describes dispensing "particulate mineral mixes" that "can comprise quartz material" into a mold. | ¶38-39 | col. 2:21-23 |
| wherein the mold has a top opening which leads to the inner chamber, and the mold includes a first wall, a second wall, a third wall, and a fourth wall... | Defendant’s process allegedly uses a mold with an "upwardly facing opening" and walls. The complaint includes a figure from Cambria's own '942 Patent, which depicts a vertically oriented mold receiving different particulate mineral mixes to form layers in a slab (Compl. ¶40). | ¶40 | col. 2:53-57 |
| using a computer processor to controllably supply the first mixture... through a first region... but not through a second region... during a first state... | Defendant’s process allegedly uses a computer to supply the mixture to a first portion of the slab. This is inferred from the appearance of the final product, which is alleged to have a "first partial longitudinal vein" extending over a first, but not a second, portion of the slab. | ¶41 | col. 2:61-65 |
| using the computer processor to controllably supply the first mixture... through the second region... but not through the first region... during a second state. | Defendant’s process allegedly uses a computer to supply the mixture to a second portion of the slab. This is inferred from the appearance of the final product, which is alleged to have a "second partial longitudinal vein" extending over a second, but not the first, portion of the slab. | ¶42 | col. 2:65-68 |
'912 Patent Infringement Allegations
The complaint does not provide a structured, element-by-element mapping for its infringement allegations regarding the '912 Patent. Instead, it presents a narrative theory based on an expert analysis of the finished products (Compl. ¶60-61). The core of the allegation is that the "nature of the cracks" in the Accused Products—specifically their "directionally random" appearance and varying sizes and shapes—indicates they were formed by the claimed process (Compl. ¶60-61). The Plaintiff’s named inventor, Alex Xie, concludes that these features show that portions of the slab were pushed up from below by multiple devices to create cracks, into which a colorizing material was then deposited while the cracks remained open (Compl. ¶60-61).
Identified Points of Contention
- Evidentiary Questions ('516 Patent): A primary issue will be whether Plaintiff can prove Defendant’s process meets the "computer processor to controllably supply" limitations. The complaint relies on inferences from the final product's appearance and references to Defendant's own patent, raising the question of what direct evidence of the manufacturing process will show.
- Product-by-Process Proof ('912 Patent): The infringement theory for the '912 patent appears to be a classic product-by-process dispute. A key question for the court will be whether the appearance of the final product (e.g., "directionally random" cracks) is sufficient to prove that Defendant used the specific patented method, or if other manufacturing processes could create a similar result.
V. Key Claim Terms for Construction
Term ('516 Patent): "through a first region of the top opening but not through a second region"
- Context and Importance: This limitation defines the spatial and temporal separation of material deposition that is central to the inventive method. The dispute may center on whether Defendant's process, which may involve some blending or overlap, meets the strict negative requirement of "but not through a second region."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes supplying mixtures to "specific areas of the inner chamber," which suggests "region" can be broadly interpreted as any designated portion of the mold opening ('516 Patent, col. 2:5-7).
- Evidence for a Narrower Interpretation: A party might argue that "but not through" requires complete and total isolation between the regions during each state of deposition, a standard that a commercial process might not meet.
Term ('912 Patent): "introducing a first crack"
- Context and Importance: The entire claimed method is predicated on the creation of a "crack." The definition of this term is critical, as Defendant may argue its process creates separations, folds, or depressions in the soft material that do not rise to the level of a "crack" as understood in the patent.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent specifies the slab is "in a soft, damp, slightly pressed state" ('912 Patent, col. 2:11-14). In this context, a "crack" could be interpreted more broadly to mean any induced fissure sufficient to receive and hold the colored material.
- Evidence for a Narrower Interpretation: The patent consistently uses the term "crack" and includes a figure showing a "slab with a crack formed" (Fig. 6), which depicts a distinct, somewhat jagged line of separation ('912 Patent, col. 4:63-65). This may support an interpretation requiring a clear fracture or rupture in the material.
VI. Other Allegations
Indirect Infringement
The complaint includes conclusory recitations of indirect infringement (Compl. ¶35, 51). However, as the asserted claims are method claims and the Defendant is accused of directly performing the methods, the complaint does not plead specific facts to support a claim for induced or contributory infringement against a third party.
Willful Infringement
The complaint alleges willful infringement based on Defendant's alleged pre-suit knowledge of both patents-in-suit. For the '516 Patent, knowledge is alleged as of February 2018 through communications and subsequent litigation where Defendant itself allegedly relied on the '516 Patent (Compl. ¶25-26, 47). For the '912 Patent, knowledge is alleged as of December 2021 when Defendant allegedly sought a license to a portfolio including that patent (Compl. ¶27, 63). The complaint further supports willfulness by alleging Defendant made repeated but unsuccessful attempts to license the patents while refusing to disclose its own manufacturing processes (Compl. ¶27-33).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central evidentiary question will be one of process proof: Particularly for the '912 patent, can the plaintiff demonstrate that the defendant uses the claimed mechanical cracking-and-filling process based primarily on an expert's analysis of the finished slab, or will direct evidence of the defendant's manufacturing line be required to meet its burden?
- A core issue for the '516 patent will be one of technical and factual scope: Does the defendant's method of depositing material into a mold, which the plaintiff alleges is described in the defendant's own patents, meet the specific claim requirement of using a computer to supply material to a "first region... but not through a second region" in discrete, sequential states?
- A key legal and factual question will be willfulness: Given the complaint’s detailed allegations of pre-suit knowledge, prior litigation history involving the patents, and failed licensing negotiations, the court will need to determine whether the defendant’s alleged conduct rises to the level of egregious behavior that would justify enhanced damages.