Thanks for visiting! Welcome to a new way to research case law. You are viewing a free summary from Descrybe.ai. For citation and good law / bad law checking, legal issue analysis, and other advanced tools, explore our Legal Research Toolkit — not free, but close.
Alloc, Inc. v. Pergo, L.L.C
Citations: 751 F. Supp. 2d 1049; 2010 WL 3860382Docket: Case 00-C-999
Court: District Court, E.D. Wisconsin; September 30, 2010; Federal District Court
Alloc, Inc., Berry Finance N.V., and Välinge Innovation AB (collectively "Alloc") are involved in a patent infringement case against Pergo, L.L.C. in the United States District Court for the Eastern District of Wisconsin. Alloc has filed motions to preclude Pergo's invalidity defenses and for partial summary judgment regarding the validity of several patents, including the United States Reissued Patent No. 39,439 and other related patents.
Pergo has moved for summary judgment to dismiss Alloc's infringement claims, arguing that Alloc cannot prove infringement due to a "lack of play" in the accused products. This motion focuses on the testimony of Alloc's technical expert, Dr. Robert Rice, and previous legal rulings.
The court outlines the standard for summary judgment, stating that it can be granted if there is no genuine issue of material fact and the moving party is entitled to judgment as a matter of law, as per Federal Rule of Civil Procedure 56(c). The court must consider evidence in favor of the non-moving party and determine whether a reasonable jury could find in favor of that party. The burden is on the movant to demonstrate the absence of a genuine issue of material fact and entitlement to judgment.
Infringement claims, whether literal or under the doctrine of equivalents, must be established by a preponderance of the evidence. The court emphasizes the need to view evidence through the lens of the substantive evidentiary burden that would apply at trial.
Proof by a preponderance of the evidence requires demonstrating that infringement is more likely than not to have occurred. Alloc, Inc. is a Delaware corporation based in Wisconsin, while Berry is a Belgian corporation and Välinge is a Swedish corporation. From 2000 to June 2006, Berry had an exclusive license to the patents-in-suit, and Alloc held an exclusive sublicense. Pergo, a Delaware LLC with its principal place of business in North Carolina, markets and sells mechanically locking laminate flooring in the U.S.
The following patents and their respective claims have been asserted against Pergo: the '621 patent (issued January 13, 1998), '267 patent (January 19, 1999), '907 patent (February 15, 2000), '410 patent (February 6, 2001), '579 patent (February 11, 2003), and RE '439 patent (reissued December 26, 2006). Claims against Pergo include specific claims from each patent, including claim 21 of the '439 patent and various claims from the other patents.
Pergo's product sales began with the Uniclic profile in August 2000 and expanded to include "SmartLock" joint profiles in August 2001. Alloc has accused 23 specific products of infringement, including various models marketed under "SmartLock." These products were sold through major retailers, with approximately half of the accused sales attributed to the Presto product with the Uniclic joint. Pergo's products come in three thicknesses: 7 mm, 8 mm, and 10 mm, with specific products falling into each category. Before milling a joint, Pergo's engineers create profile drawings used by tooling manufacturers.
Seventeen profiles were developed for tooling the 23 accused SmartLock products. Alloc's First Amended Complaint, filed on August 16, 2000, targeted Unilin and Pergo for infringing the '267 and '907 patents through the UNICLIC product. In December 2000, Alloc initiated a similar complaint with the International Trade Commission (ITC) regarding Pergo's Presto product, leading to an evidentiary hearing from July 26 to August 1, 2001, and closing arguments on October 16, 2001. On November 2, 2001, ALJ Paul A. Luckern ruled that Pergo's Presto product did not infringe the asserted patents, a decision affirmed by the ITC Commission on March 22, 2002, and later upheld by the Federal Circuit in 2003. The court interpreted "play" in the context of the patents and found substantial evidence supporting the ALJ's conclusion that the accused flooring systems lacked the necessary "play" for literal infringement.
Alloc's technical expert, Rice, was presented with 24 sub-brands during his deposition and accused all of them of infringement, despite initially not recognizing most names. He only tested three products: Presto, Prodigy, and Accolade, with no evidence provided for the remaining untested products. Rice's analysis did not involve samples from the actual products sold in the U.S. marketplace, as none were from sealed boxes. He lacked documentation on the source of the panels and tested only 8 mm panels without evaluating the 7 mm or 10 mm products. Rice acknowledged uncertainty in the number of Accolade panels tested and provided qualified responses regarding the Prodigy panels, indicating a limited basis for his infringement opinions.
Rice received extensively damaged panels, often contained in mixed boxes, and most were labeled. He noted that irregular surfaces obscure gaps in joints, creating friction during assembly. Rice testified that gaps indicate potential displacement, which he observed in photographs he produced, although these did not align with the Court's claim constructions. He documented four photographs of damaged panels but none captured the long sides or the full assembly, revealing significant misalignment at the edges.
Rice's testing protocol involved brushing panels with a horsehair brush, a step not in Pergo's installation instructions. He identified spaces for play in his photos but acknowledged these were not at required locations. His analysis of a "SmartLock" tooling diagram concluded that space for play exists, yet he did not analyze the critical interface between the "locking element" and "locking groove" as mandated by the Court.
Rice's examination of a Uniclic profile drawing led to the conclusion that the groove was larger than the tongue. He admitted that repeated assembly can change joint performance and develop play. His load testing was limited to two panels, which were cut down and not acclimated according to Pergo’s instructions. Although he placed the panels in a controlled environment, his video documentation failed to capture the load cell readings when movement began, and he did not maintain written records of his tests.
Regarding the doctrine of equivalents, Rice asserted that if the space between locking elements is indiscernible due to surface texture, then play is equivalent because displacement is possible. During the prosecution of a patent application, the inventor argued that prior art did not suggest a system where panels exhibit play between locking components when joined.
Perván argued that the "play" feature of his flooring panels allowed them to slide relative to each other at the joint edges, facilitating installation and disassembly. This was differentiated from Trotter's system, which utilized spring clips to keep boards closely aligned, preventing pinching. In a later amendment, Perván contended that Trotter's definition of "play" differed from that in his application, as it served a distinct purpose and was located differently. The ITC found that the complainants were estopped from claiming infringement based on equivalents of "play," noting that the inventor had distinguished his work from prior art by emphasizing the significance of "play" for panel displacement and disassembly. Rice, serving as an expert witness, testified in multiple cases regarding the accused products, including Unilin's Quick-Step, which features a joint similar to Pergo's. He asserted that panels with a Uniclic joint could not be moved without applying undue force and indicated that using tools other than hand pressure constituted "undue force." Perván’s CEO testified that excessive force damaging the edges indicated the panels were not truly "displaceable" as defined in the patents. Rice characterized "play" as the ability to move or slide without excessive slop in the joint. Additionally, the U.S. Patent U.S. 6,591,568, applied for by Pergo in 2000 and issued in 2003, referenced prior techniques for joining floorboards.
A traditional tongue-and-groove floorboard design is enhanced with a heel on the tongue's lower side, which fits into a recess in the groove of the opposite board. During assembly, the groove's lower cheek bends away but snaps back when positioned correctly. This contrasts with prior inventions (WO 94/26999 and WO 97/47834), which utilized separate components or machining techniques that could lead to gaps between boards, allowing dirt and moisture infiltration. On June 22, 2000, Pergo obtained a license from Flooring Industries Ltd. for U.S. Patent No. 6,006,486 ('486 patent), with assembly methods for its SmartLock product being similar to those for its Presto product. Pergo's installation techniques involve either angling and twisting or tapping panels together. Both the '834 PCT publication and the '486 patent trace back to the same Belgian applications. Pergo's Presto product is marked as made under the '486 patent. Bernard Thiers, the '486 patent inventor, acknowledged that the Uniclic joint allows for "speling," which differs in meaning from "play" in the context of the patents-in-suit. Pergo argues for dismissal of Alloc's infringement claims, asserting no evidence supports the existence of requisite space or displacement in its products and that Alloc's expert analysis is fundamentally flawed. Alloc counters that factual issues about play exist and criticizes Pergo's arguments as contradictory. The Court outlines a two-step patent infringement analysis: (1) claim construction, a legal question, and (2) determining if the accused product meets the claims, a factual inquiry.
Summary judgment for patent infringement or non-infringement is appropriate only when no reasonable jury could find that all limitations of a properly construed claim are present in the accused device. Under the doctrine of equivalents, a product can be deemed infringing even if it does not literally meet the patent claim, provided there is an equivalence between the elements. This doctrine acknowledges that patent claim language may not capture every detail of an invention, and strict literal interpretation could undermine patent value by allowing minor modifications to bypass infringement. However, the doctrine introduces uncertainty regarding patent claim scope and may deter non-infringing innovation. To balance protecting patentees and providing public notice, rules have emerged, including the "all limitations" rule, which states that an accused product must include each claim limitation, either literally or equivalently. This rule necessitates a limitation-by-limitation equivalence assessment and prohibits finding equivalence that would entirely negate a claim limitation. Courts must evaluate each case's circumstances to determine if an alleged equivalent is a minor change or renders the limitation meaningless. Prosecution history estoppel is another rule that requires patent claims to be interpreted considering the patent office proceedings, ensuring claims reflect any amendments or rejections made during the application process.
The doctrine of equivalents permits a patentee to assert claims for minor modifications not explicitly included in the original patent claims. However, if a patentee narrows a claim after a rejection, they cannot later argue that the surrendered elements should be treated as equivalents to the claims of the issued patent. The patentee has the burden to demonstrate that the amendment did not relinquish the specific equivalent in question, showing that a skilled artisan could not have reasonably drafted a claim encompassing the alleged equivalent at the time of amendment.
In this case, Alloc accused 24 Pergo products of infringement but only tested three. The Court found no evidence that the testing of these three products could support claims of infringement for the remaining 21 untested products, leading to the dismissal of claims against these products. The Court also clarified that "play" refers to the space between locking surfaces of interlocking panels, necessitating actual space between specific components. Alloc's argument that an admission in Pergo's '568 patent regarding "long side displacement" applied to its products was unconvincing due to the Court's definition of "play," which does not equate to displacement, and the ambiguity surrounding the referenced patents.
The statement clarifies that Alloc fails to demonstrate that the Uniclic or SmartLock products possess the "space" required by the Court's definition. Alloc contends that Pergo's installation videos exhibit "play" on the short sides of its panels, indicating easy short side displacement. However, these videos do not show any space between the locking element and the locking groove. Alloc's argument equates displacement with play, which misinterprets the Court’s definition. Additionally, the video evidence provided by Alloc, including that from Rice, does not establish the required space and focuses solely on alleged displacement.
Alloc's position necessitates altering the Court's construction of "play" to disregard the essential requirement of space between locking surfaces. The burden of proof lies with Alloc to demonstrate that all limitations of the asserted claims are present in the accused products, specifically the required space. Alloc's expert did not analyze whether the accused products have this space. The photographs reproduced from Rice's report are cropped, obscuring any analysis of the necessary space. Rice's analysis of Pergo's profile drawings did not include critical locations, further failing to substantiate Alloc’s claims.
Alloc attempts to use Pergo’s installation diagrams to illustrate displacement but these diagrams do not provide evidence of the required space. Testimony from Thiers regarding "vertical play" is irrelevant to the Court's definition, as it relates only to the dimensions of the tongue and groove. Alloc's reference to Pergo's CertainSeal challenge video is also inadequate, as it pertains to surface gaps rather than the operative space defined by the Court, suggesting these gaps are temporary and subject to change with environmental conditions. Rice's supplemental declaration claiming to show spaces lacks sufficient evidence to support Alloc's argument.
Rice's statement lacks evidence of the required "space" at the specified location, as shown by photographic evidence and Pergo's internal drawings which confirm its absence. Alloc incorrectly conflates "play" with "displacement" and neglects the Court's distinct requirement for a "space" between the locking element and the locking groove. Despite viewing evidence favorably for Alloc, no reasonable jury could find proof of such a space. Alloc has not demonstrated infringement under the doctrine of equivalents, focusing instead on contesting prosecution history estoppel without addressing Pergo's argument that Alloc is estopped from claiming "play" based on prior statements made during the prosecution of the relevant patent application. Alloc's claim that the original '621 patent’s prosecution did not lead to estoppel is insufficient, as mere allowance of claims does not overcome the need for substantial evidence linking the differences between the claimed invention and the accused device. Alloc's failure to provide such evidence or to make a compelling argument regarding the "function, way, result" test results in its inability to invoke the doctrine of equivalents. Consequently, Pergo's motion for summary judgment to dismiss Alloc's infringement claims due to the lack of "play" is granted. Pergo also maintains that there are multiple independent grounds for summary judgment regarding method claims. Additional motions from Pergo regarding laches and willful infringement, as well as Alloc’s motion to preclude invalidity defenses, are dismissed in light of the Court's ruling on the lack of "play." The Court grants judgment in favor of Pergo on its non-infringement counterclaims and dismisses its remaining counterclaims without prejudice to conserve judicial resources.
The Federal Circuit has upheld the dismissal of counterclaims of invalidity when non-infringement is evident and invalidity is not clearly established. In this case, Pergo's motion for summary judgment regarding non-infringement due to lack of play is granted. Conversely, Pergo's motions concerning laches, non-infringement of asserted method claims, and willful infringement are dismissed. Alloc's motion to preclude Pergo's invalidity defenses and for partial summary judgment on grounds of indefiniteness or written description of specific patents is also dismissed, along with Alloc's claims against Pergo related to those patents, which are dismissed with prejudice. Pergo's counterclaim for non-infringement of the mentioned patents is granted, while its remaining counterclaims for invalidity, inequitable conduct, and laches/estoppel are dismissed without prejudice. The Clerk of Court is instructed to enter judgment accordingly.
Additionally, the document notes that relevant facts are based on Pergo's findings and Alloc's undisputed propositions. It clarifies the patent lineage and addresses disputed findings concerning the testing methodology of Rice, criticizing his approach and the credibility of his testimony. Pergo's arguments regarding Rice’s testimony have not established grounds for excluding it under the "sham issue" rule, and credibility matters are not resolved at the summary judgment stage.