DCT

2:23-cv-00908

BCI Acrylic Inc v. Milestone Bath Products Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:23-cv-00908, E.D. Wis., 07/07/2023
  • Venue Allegations: Venue is alleged to be proper in the Eastern District of Wisconsin because Defendant TightSeal has its principal place of business in the district, and both defendants are alleged to conduct business and commit acts of infringement within the district.
  • Core Dispute: Plaintiff alleges that Defendants' simulated tile acrylic sheets are manufactured using a process that infringes a patent directed to a method of creating such patterns using a computer-controlled router.
  • Technical Context: The technology concerns the manufacturing of decorative wall panels, often used in bath and shower enclosures as an alternative to traditional ceramic tile.
  • Key Procedural History: The complaint alleges that Plaintiff requested Defendant Milestone to disclose its manufacturing process, but Milestone refused. Plaintiff invokes 35 U.S.C. § 295, a statutory presumption that a product is made by a patented process under certain conditions, which may shift the burden of proof to the Defendants.

Case Timeline

Date Event
2015-02-18 U.S. Patent No. 10,144,243 Priority Date
2018-12-04 U.S. Patent No. 10,144,243 Issue Date
2023-07-07 Complaint Filing Date

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

U.S. Patent No. 10,144,243 - "Method For Creating Simulated Tile Wall"

  • Patent Identification: U.S. Patent No. 10,144,243, "Method For Creating Simulated Tile Wall," issued December 4, 2018.

The Invention Explained

  • Problem Addressed: The patent’s background describes prior art methods for creating simulated tile patterns on acrylic sheets as costly and inflexible. These methods required heating an acrylic sheet and pressing it into a physical mold, a process that demanded skilled operators and a new, expensive mold for each different tile pattern desired. (’243 Patent, col. 1:28-53).
  • The Patented Solution: The invention proposes a method that avoids molds and heating. Instead, it uses a computer-controlled material removal tool, such as a CNC router, to directly engrave lines simulating tile grout into a sheet of acrylic. (’243 Patent, col. 1:64-67). A user can design a tile pattern, store it in a computer database, and then instruct the router to cut that specific pattern, allowing for rapid and inexpensive customization without requiring new physical molds for each design. (’243 Patent, col. 2:50-67).
  • Technical Importance: This method provided a more flexible and less capital-intensive manufacturing process for creating customized, realistic-looking simulated tile panels than the mold-based prior art. (’243 Patent, col. 1:54-58).

Key Claims at a Glance

  • The complaint asserts infringement of at least independent claim 1. (Compl. ¶15).
  • The essential elements of independent claim 1 include:
    • Determining a set of tile pattern characteristics (e.g., shape, orientation, dimensions, cut depth).
    • Entering and storing these characteristics digitally in a database associated with a "computer controlled material removal tool."
    • Selecting and placing a sheet of acrylic material below the tool.
    • Retrieving the stored pattern characteristics.
    • Forming "grout lines" by using the tool to remove a predetermined amount of material from the acrylic sheet’s top surface based on the retrieved characteristics.
  • The complaint does not explicitly reserve the right to assert dependent claims.

III. The Accused Instrumentality

Product Identification

  • The accused products are the "BellaStone 'Illusion Series' acrylic sheets" manufactured by Milestone and sold by both Milestone and TightSeal. (Compl. ¶12-13).

Functionality and Market Context

  • The accused products are acrylic sheets featuring a simulated tile pattern, intended for use in applications like shower and bath enclosures. (Compl. ¶10, ¶12).
  • The complaint does not describe the specific manufacturing process used to create the Accused Products. Instead, it alleges on information and belief that the products "are made using a process that infringes at least claim 1 of the '243 patent." (Compl. ¶15). The complaint notes that images and descriptions of the products are contained in a brochure attached as Exhibit 2. (Compl. ¶12).
  • No probative visual evidence provided in complaint.
  • The complaint alleges that Milestone manufactures, imports, and sells the Accused Products in the United States, including sales to TightSeal, which then uses, sells, or offers them for sale in Wisconsin. (Compl. ¶6-7, ¶13).

IV. Analysis of Infringement Allegations

The complaint does not provide a claim chart exhibit or a detailed, element-by-element infringement analysis. The core of the infringement allegation rests on 35 U.S.C. § 271(g), which makes it an act of infringement to import, offer to sell, sell, or use within the United States a product which is made by a process patented in the United States.

The complaint's infringement theory is based on a statutory presumption under 35 U.S.C. § 295. Plaintiff alleges that there is a "substantial likelihood" that the Accused Products were made by the patented method and that Plaintiff "made reasonable efforts to determine the process actually used... and was unable to so determine" after Defendant Milestone refused to disclose the information. (Compl. ¶17, ¶27). If this presumption is applied by the court, the burden would shift to the Defendants to prove that the Accused Products were not made by the patented process.

  • Identified Points of Contention:
    • Procedural Question: A threshold dispute may concern the application of the § 295 presumption. The court will have to determine whether the Plaintiff's allegations—that the end product appears similar to one made by the patented process and that its inquiry was rebuffed—are sufficient to establish a "substantial likelihood" and "reasonable efforts," thereby shifting the burden of proof to the Defendants.
    • Technical Question: Assuming the case proceeds, the central factual dispute will be the nature of the Defendants' actual manufacturing process. The key question is whether that process involves the use of a "computer controlled material removal tool" to engrave grout lines into an acrylic sheet, as required by the claims.

V. Key Claim Terms for Construction

  • The Term: "computer controlled material removal tool"

  • Context and Importance: This term is the central feature of the claimed invention, distinguishing it from the prior art molding process. The infringement analysis will hinge on whether the Defendants' manufacturing apparatus qualifies as such a tool.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The specification states that the invention "utilizes a robotic arm and/or a CNC router to engrave tile lines," suggesting the term may encompass a class of automated engraving or cutting machines beyond a single specific embodiment. (’243 Patent, col. 1:64-66).
    • Evidence for a Narrower Interpretation: The detailed description of the preferred embodiment consistently refers to a specific configuration of "a robotic arm 24 connected to a router 26 having a router bit 27." (’243 Patent, col. 2:50-53). A party could argue that this consistent description limits the scope of the term to a mechanical routing apparatus.

  • The Term: "removing from the top displayed surface... a first predetermined amount of material"

  • Context and Importance: This phrase defines the action that creates the simulated grout lines. Whether the Defendants' process performs this specific type of "removal" will be critical to the infringement determination.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The claim language itself is general. A party could argue it covers any computer-controlled process that physically subtracts material from the surface, such as mechanical routing, laser ablation, or water-jet cutting.
    • Evidence for a Narrower Interpretation: The specification describes the process as making "incisions" with a "router bit" to "remove[] the material from the sheet 13." (’243 Patent, col. 2:60-62, col. 3:1-3). This could support an argument that the term is limited to mechanical cutting or engraving and does not read on other forms of material removal, such as thermal or chemical processes.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges that Milestone induced infringement under 35 U.S.C. § 271(b) by "knowingly and intentionally encouraging, instructing, and aiding others to make the Accused Products using a method that falls within the scope of at least claim 1." (Compl. ¶18). The facts supporting this allegation are not detailed beyond this statement. The primary infringement claim is asserted under § 271(g) for importing and selling the product of the patented process. (Compl. ¶19, ¶28).
  • Willful Infringement: Willfulness is alleged against both Defendants based on their purported "aware[ness] of the '243 Patent and BCI's rights" and their continued infringing acts thereafter "without a good faith belief that the '243 Patent is invalid, not infringed and/or unenforceable." (Compl. ¶21, ¶30). The complaint does not specify when or how Defendants allegedly became aware of the patent.

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

  • A primary issue will be one of procedural burden-shifting: will the court find that the Plaintiff has met the statutory requirements of 35 U.S.C. § 295 to establish a "substantial likelihood" that the Accused Products are made by the patented process and that it made "reasonable efforts" to determine the actual process? The outcome of this question could significantly impact the course of discovery and trial.
  • The ultimate dispositive issue will be one of process identity: does the Defendants' actual, undisclosed manufacturing method fall within the scope of claim 1? Specifically, does it employ a "computer controlled material removal tool" to engrave patterns into an acrylic sheet, or does it rely on an alternative technology (such as molding, printing, or laser etching) that may not be covered by the patent's claims?