DCT
2:23-cv-00900
Old Mill Brick v. MS Intl
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Old Mill Brick LLC (Delaware)
- Defendant: MS International Inc. (California)
- Plaintiff’s Counsel: Dorsey & Whitney LLP
- Case Identification: 2:23-cv-00900, D. Utah, 12/14/2023
- Venue Allegations: Venue is alleged to be proper in the District of Utah because the Defendant maintains a place of business in the district and has allegedly committed acts of infringement there by selling the accused product.
- Core Dispute: Plaintiff alleges that Defendant’s thin brick sheet products are made by a process that infringes a U.S. patent covering a method for manufacturing fiber-enforced thin brick sheets.
- Technical Context: The technology concerns prefabricated thin brick veneer panels used for wall and floor coverings, which are designed to simplify installation and reduce costs compared to traditional piece-by-piece bricklaying.
- Key Procedural History: The complaint alleges that Plaintiff sent a notice letter to Defendant on October 11, 2023, one day after the patent-in-suit issued, identifying the patent and the alleged infringement. This notice may form the basis for allegations of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2011-10-21 | Earliest Priority Date for ’322 Patent |
| 2021 | Defendant allegedly encouraged to copy Plaintiff's product |
| 2023-10-10 | ’322 Patent Issued |
| 2023-10-11 | Plaintiff sent pre-suit notice letter to Defendant |
| 2023-12-14 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,781,322 - “Fiber Enforced Thin Brick Sheet and Process” (Issued Oct. 10, 2023)
The Invention Explained
- Problem Addressed: The patent describes the prior art of thin brick installation as costly, time-consuming, and requiring highly skilled labor. It notes that previous attempts at creating prefabricated thin brick sheets were often unsatisfactory due to issues like excessive weight, insufficient strength, and installation complexity, which limited their commercial success (’322 Patent, col. 1:44-64, col. 2:1-6).
- The Patented Solution: The invention is a method for manufacturing a thin, lightweight, and "substantially non-stretchable" brick sheet. The process involves adhering a plurality of thin bricks (5) to a fiber-reinforced backing layer (7), such as a fiberglass grid, using a first adhesive (6) (’322 Patent, Fig. 1; col. 2:36-48). A key aspect of the method is ensuring that the rear surface of each brick is positioned to overlap at least two holes in the backing grid, and that these overlapped holes remain "free of the first adhesive." This allows a second adhesive, such as mortar, to penetrate through the open holes during final installation to create a direct, strong bond between the brick sheet and the underlying wall or floor surface (’322 Patent, col. 7:1-11).
- Technical Importance: This method aims to produce a prefabricated brick panel that is rigid enough to be handled easily but features a mechanism for robust adhesion to a final surface, thereby simplifying the installation process (’322 Patent, col. 2:18-22).
Key Claims at a Glance
- The complaint asserts independent claims 1, 11, and 19, and dependent claims 2-3, 5-6, 8-10, 12, and 16-20 (Compl. ¶30, ¶37).
- Independent Claim 1 recites the core method, with essential elements including:
- adhering a plurality of thin bricks to a first side of a backing layer with a first adhesive
- wherein the backing layer defines a grid that comprises a plurality of holes
- wherein the backing layer is non-stretchable
- wherein the plurality of thin bricks are adhered to the backing layer such that a portion of a rear surface of each brick of the plurality of thin bricks overlaps at least two holes of the plurality of holes in the backing layer
- and wherein the at least two holes are free of the first adhesive and open such that a second adhesive can penetrate through the at least two holes to adhere the thin brick sheet to a wall or floor surface
- The complaint does not reserve the right to assert additional claims but asserts a broad range of existing claims.
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is Defendant's "BrickStaks" thin brick sheet product (Compl. ¶2).
Functionality and Market Context
- The complaint alleges that the BrickStaks product is a thin brick sheet used for wall or floor coverings that is made by a process directly corresponding to the patented method (Compl. ¶30). The complaint includes a photograph of the accused product, identifying its "Thin Bricks" and "Non-stretchable backing grid" (Compl. ¶32, p. 6). It is alleged that the product is a "direct copy" of Plaintiff's commercially successful "Brickwebb" product and was developed after one of Plaintiff's retailers encouraged the Defendant to create a competing product (Compl. ¶2, ¶21-22).
IV. Analysis of Infringement Allegations
The complaint alleges that Defendant infringes under 35 U.S.C. § 271(g) by importing, offering to sell, and selling the BrickStaks product in the U.S., which is alleged to be made in Turkey by a process covered by the ’322 Patent (Compl. ¶23, ¶36-37).
’322 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| adhering a plurality of thin bricks to a first side of a backing layer with a first adhesive... | The accused product is allegedly made by adhering thin bricks to a backing grid with a first adhesive. | ¶32 | col. 7:1-3 |
| ...wherein the backing layer defines a grid that comprises a plurality of holes, wherein the backing layer is non-stretchable... | The product incorporates a "Non-stretchable backing grid" with multiple holes, as depicted in a photograph. This photograph shows thin bricks adhered to a white, mesh-like backing grid. | ¶32, p.6 | col. 7:3-5 |
| ...wherein the plurality of thin bricks are adhered to the backing layer such that a portion of a rear surface of each brick of the plurality of thin bricks overlaps at least two holes of the plurality of holes in the backing layer... | The bricks are allegedly adhered so that a portion of each brick's rear surface covers at least two holes in the backing grid. The complaint includes a photograph of the product's rear, with callouts indicating this overlap. | ¶33, p.7 | col. 7:5-9 |
| ...and wherein the at least two holes are free of the first adhesive and open such that a second adhesive can penetrate through the at least two holes to adhere the thin brick sheet to a wall or floor surface. | It is alleged that at least two of the holes overlapped by each brick are free of the first adhesive and remain open. A close-up photograph of the product's rear is provided to show open grid holes beneath an adhered brick. | ¶34, p.8 | col. 7:9-11 |
- Identified Points of Contention:
- Process vs. Product Evidence: The complaint asserts infringement of method claims under 35 U.S.C. § 271(g), based on the importation of a product made by that method abroad. The infringement allegations are supported by reverse engineering the final product's structure. A potential point of contention is whether the structure of the final product is sufficient evidence to prove that the specific process used by the foreign manufacturer meets every limitation of the claimed method, or if an alternative, non-infringing process could have produced a similar product.
- Technical Questions: The complaint's photographic evidence for the "free of the first adhesive" limitation (Compl. p. 8) may itself become a point of dispute. The photograph appears to show some amount of adhesive around the perimeter of the open holes. This raises the question of whether discovery will show the holes are sufficiently unobstructed to allow a second adhesive to penetrate and form a bond as required by the claim, or if Defendant will argue that residual adhesive from the manufacturing process avoids this limitation.
V. Key Claim Terms for Construction
The Term: "non-stretchable"
- Context and Importance: This term defines a critical physical property of the backing layer. The patent distinguishes the invention from prior art that lacked "structural strength and rigidity" (’322 Patent, col. 2:11-12). Practitioners may focus on this term because its precise degree is not quantified, creating potential ambiguity.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states that the sheets "will normally be flexible, but it is important that they be substantially non-stretchable" (’322 Patent, col. 2:42-44, emphasis added). The use of the qualifier "substantially" may support a construction that permits some minimal amount of elasticity.
- Evidence for a Narrower Interpretation: The patent emphasizes that this quality is important because it allows the sheet to be "rigid enough to be readily handled and worked" (’322 Patent, col. 2:47-48). This functional requirement for rigidity could support a narrower construction that excludes materials with noticeable give or elasticity.
The Term: "free of the first adhesive"
- Context and Importance: This term is central to the invention's two-stage adhesion mechanism, as it describes the condition of the holes that allow mortar to pass through during final installation. Its definition will be critical to determining infringement.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself provides a functional purpose: the holes must be open "such that a second adhesive can penetrate" and "adhere the thin brick sheet" (’322 Patent, col. 7:9-11). This may support a construction where "free of" means "not blocked" or "sufficiently clear to perform the bonding function," which could tolerate incidental amounts of adhesive residue that do not prevent penetration.
- Evidence for a Narrower Interpretation: A defendant may argue for the plain meaning of "free of," which implies a complete absence of the first adhesive in the designated holes. The patent does not explicitly define a tolerance for residual adhesive, which could support an argument that any amount of the first adhesive in the holes places a product outside the claim scope.
VI. Other Allegations
- Willful Infringement: The complaint alleges willful infringement based on two primary sets of facts. First, it alleges pre-suit knowledge by claiming that Defendant was encouraged to "copy" Plaintiff's successful product and subsequently sought indemnification from its Turkish manufacturer, suggesting an awareness of potential patent rights (Compl. ¶22-24). Second, it alleges post-notice knowledge based on Defendant's continued importation and sale of the "BrickStaks" product after receiving a notice letter on October 11, 2023, that explicitly identified the ’322 Patent and the accused product (Compl. ¶26, ¶29, ¶39).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central evidentiary challenge will be one of process reconstruction: given that the infringement allegation rests on a manufacturing process that occurred abroad, can the Plaintiff use the physical structure of the imported product to definitively prove that the foreign manufacturer necessarily performed every step of the asserted method claims?
- The case may also turn on a question of definitional scope: how will the court construe the term "free of the first adhesive"? Will it require a complete, 100% absence of adhesive in the critical passthrough holes, or will a functional definition prevail, where the holes are merely clear enough to permit a second adhesive to bond effectively? The answer could be dispositive based on a forensic analysis of the accused product.