DCT
3:25-cv-00699
CertainTeed LLC v. GAF Materials LLC
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: CertainTeed LLC (Delaware)
- Defendant: GAF Materials LLC (Delaware)
- Plaintiff’s Counsel: Caldwell Cassady & Curry P.C.; Latham & Watkins LLP
- Case Identification: 3:25-cv-00699, N.D. Tex., 03/24/2025
- Venue Allegations: Plaintiff alleges venue is proper in the Northern District of Texas because Defendant GAF Materials LLC has a regular and established place of business in the district, including its largest shingle manufacturing facility in Ennis, Texas, and another facility in Dallas, where infringing activities are alleged to occur.
- Core Dispute: Plaintiff alleges that Defendant’s "California COOL Shingles" product lines, and the processes used to make them, infringe a patent related to technology for creating colored, solar heat-reflective roofing granules.
- Technical Context: The technology addresses the creation of dark-colored roofing shingles that can reflect a significant portion of solar heat, thereby reducing building energy costs and mitigating urban "heat-island effects."
- Key Procedural History: The complaint alleges that a named inventor on the patent-in-suit, Ming-Liang Shiao, has been employed by Defendant since 2014 and was involved in the development of the accused products, which may support allegations of willful infringement and a defense of assignor estoppel. It also notes that the patent-in-suit was cited to the USPTO by a "sister company" of the Defendant during patent prosecution. The patent-in-suit expired in July 2024.
Case Timeline
| Date | Event |
|---|---|
| 2003-10-06 | '500 Patent Priority Date |
| 2007-07-10 | '500 Patent Issue Date |
| 2014-03-01 | Inventor Ming-Liang Shiao begins employment with Defendant GAF |
| 2020-01-01 | Accused Timberline HDZ shingle line launched |
| 2024-07-01 | '500 Patent Expired |
| 2025-03-24 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,241,500 - "Colored Roofing Granules With Increased Solar Heat Reflectance, Solar Heat-Reflective Shingles, And Process For Producing Same," issued July 10, 2007
The Invention Explained
- Problem Addressed: The patent's background section describes the problem of conventional dark-colored roofing shingles absorbing significant solar radiation, which increases thermal stress on the roofing materials, elevates temperatures in the building's surroundings, and increases the building's cooling load ('500 Patent, col. 1:43-52; col. 2:1-6).
- The Patented Solution: The invention provides roofing granules that can produce aesthetically desirable deep-tone colors while also reflecting a high degree of solar heat ('500 Patent, col. 2:10-15). This is achieved by coating base mineral particles with a composition that includes at least one colored, infrared-reflective pigment, which reflects solar energy in the near-infrared spectrum while maintaining a dark appearance in the visible spectrum ('500 Patent, Abstract; col. 2:26-34).
- Technical Importance: This technology enabled the production of roofing materials that could be dark in color for aesthetic purposes while also meeting increasingly stringent energy efficiency standards for "cool roofs" (Compl. ¶3, 27).
Key Claims at a Glance
- The complaint asserts independent claim 33 (Compl. ¶40).
- The essential elements of independent claim 33 are:
- A process for preparing a bituminous roofing product, the process comprising:
- (a) saturating a sheet of fibrous material with a bituminous coating material to form a substrate, and
- (b) applying infrared-reflective roofing granules to the substrate, the infrared-reflective roofing granules comprising base particles coated with a cured coating composition comprising a binder and at least one colored, infrared-reflective pigment.
- The complaint notes that if any element is found not to be literally met, it will assert infringement under the doctrine of equivalents (Compl. ¶38).
III. The Accused Instrumentality
Product Identification
- The complaint identifies the accused instrumentalities as the manufacturing processes for GAF's "California COOL Shingles" product lines, which include Grand Sequoia RS, Timberline CS, Timberline HDZ RS, Timberline HDZ, Timberline HDZ RS+, Timberline NS, and Royal Sovereign shingle lines (Compl. ¶4, 28).
Functionality and Market Context
- The accused shingles are marketed as using "EcoDark Granule Technology" to achieve "vibrant color never before seen in a cool roof" (Compl. ¶27; Ex. G at 2).
- These products are promoted as meeting the "prescriptive solar reflectance and thermal emittance requirements" of energy efficiency standards such as Title 24 in California (Compl. ¶27).
- The complaint alleges that GAF and CertainTeed are two of the largest suppliers of residential shingles in the United States, positioning them as direct competitors (Compl. ¶34).
IV. Analysis of Infringement Allegations
The complaint alleges that GAF's process for manufacturing the Accused Shingles directly infringes at least claim 33 of the '500 patent. The complaint provides a diagram from an Environmental Product Declaration for the accused Timberline HDZ shingles, which illustrates the manufacturing process including a "saturation" step and a "mineral surfacing" step (Compl. ¶47; Ex. X, Fig. 1).
'500 Patent Infringement Allegations
| Claim Element (from Independent Claim 33) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A process for preparing a bituminous roofing product, the process comprising: | GAF's manufacture of the Accused Shingles, which are alleged to be bituminous roofing products because they are manufactured from raw materials including bitumen. | ¶43-45 | col. 24:3-4 |
| (a) saturating a sheet of fibrous material with a bituminous coating material to form a substrate, and | GAF's manufacturing process is alleged to saturate sheets of fibrous material, such as fiberglass mats, with hot asphalt to form a shingle substrate. | ¶47 | col. 24:7-9 |
| (b) applying infrared-reflective roofing granules to the substrate, the infrared-reflective roofing granules comprising base particles coated with a cured coating composition comprising a binder and at least one colored, infrared-reflective pigment. | GAF's process allegedly applies infrared-reflective granules to the shingle substrate. These granules are alleged to comprise base particles coated with a composition that includes a binder and "colored, infrared-reflective pigments" to provide "vibrant, dark colors." | ¶49, 51 | col. 24:10-14 |
- Identified Points of Contention:
- Technical Questions: The complaint alleges GAF's "EcoDark Granule Technology" uses the claimed technology, but does not provide specific details on the composition or structure of GAF's granules. A central factual question is whether GAF's granules are coated with a single composition containing a "colored, infrared-reflective pigment," or if they achieve their properties through an alternative structure (e.g., a multi-layer granule with a reflective base coat and a separate color coat) not covered by the specific language of claim 33.
- Scope Questions: The dispute may turn on the definition of the components of the granule coating. A key question is whether the evidence will show that the pigments used by GAF are themselves both "colored" and "infrared-reflective," as required by the claim, or if the color and infrared reflectance properties are attributable to different components within the granule's coating system.
V. Key Claim Terms for Construction
The Term: "colored, infrared-reflective pigment"
- Context and Importance: This term is the technological core of claim 33. The infringement analysis will depend on whether GAF's granule technology uses a pigment that meets this definition. Practitioners may focus on this term because GAF could argue that its granules are reflective due to their overall structure or other non-pigment components, and that its coloring pigments are conventional and not themselves "infrared-reflective" in the manner described by the patent.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The '500 patent specification discloses that the pigment can be a "solid solution including iron oxide" or a "near infrared-reflecting composite pigment," suggesting the term may cover different chemical structures that achieve the dual function of providing color and IR reflectance (col. 2:30-39).
- Evidence for a Narrower Interpretation: The specification provides specific commercial examples of such pigments, such as complex inorganic color pigments from Shepherd Color Company (col. 13:66-14:1). A party could argue the term should be construed more narrowly to be limited to such specific classes of pigments, rather than any pigment that incidentally has both color and some measure of IR-reflectivity.
The Term: "infrared-reflective roofing granules comprising base particles coated with a cured coating composition..."
- Context and Importance: This term defines the overall structure of the claimed granule. The construction of "comprising" and the relationship between the granule's overall properties and its constituent parts will be critical. The central question is whether the granule's infrared-reflective property must be attributable to the "colored, infrared-reflective pigment" within the specified coating, or if other elements can contribute.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent's overarching purpose is to create a solar-reflective granule, and the term "comprising" is typically given an open-ended meaning, which could suggest that other, unlisted components might also contribute to the final property (Abstract; col. 2:19-24).
- Evidence for a Narrower Interpretation: Claim 33 recites a specific structure: a base particle coated with a single composition that includes the special pigment. This contrasts with other embodiments described in the patent that use multiple, distinct layers to achieve reflectance and color (e.g., a white reflective base coat and a separate color top coat, as described in col. 5:21-32). The choice to claim this specific, simpler structure in claim 33 could support an argument that the properties of the granule must arise from the single recited coating.
VI. Other Allegations
Willful Infringement
- The complaint alleges GAF's infringement was willful and deliberate based on knowledge of the '500 patent since at least January 2020 (Compl. ¶30, 54). This allegation is supported by claims that:
- GAF hired a named inventor of the '500 patent, Ming-Liang Shiao, who allegedly possessed knowledge of the patent and worked at GAF in a relevant R&D capacity during the launch of the accused shingles (Compl. ¶¶31-32).
- A "sister company" to GAF, Specialty Granules Investments, LLC, cited the '500 patent in an Information Disclosure Statement during the prosecution of its own patents, which the complaint alleges gave GAF knowledge (Compl. ¶33).
- GAF, as a major competitor, monitors CertainTeed's patent portfolio (Compl. ¶34).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of technological implementation: what is the actual physical structure and chemical composition of the granules used in GAF's "EcoDark" shingles? An evidentiary dispute will likely focus on whether GAF's technology practices the specific single-coating structure of claim 33 or achieves a similar "cool roof" result through an alternative design that falls outside the claim's scope.
- The outcome may depend on a question of definitional scope: can the term "colored, infrared-reflective pigment" be construed broadly to cover any pigment that has both color and some IR-reflective properties, or will it be limited to the specific classes of complex inorganic compounds disclosed in the patent's examples?
- A key question for potential damages will be one of imputed knowledge: will the allegation that GAF employed a named inventor on the patent-in-suit—and that this inventor was involved with the accused product line—be sufficient for a fact-finder to determine that GAF's alleged infringement was willful?