Acufloor, LLC v. Eventile, Inc. et al
CLAIM CONSTRUCTION ORDER. See order for details. Signed by Judge Sheri Polster Chappell on 11/21/2022. (AEH)
Case 2:21-cv-00802-SPC-KCD Document 101 Filed 11/21/22 Page 1 of 18 PageID 1949
UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF FLORIDA
FORT MYERS DIVISION
Case No.: 2:21-cv-802-SPC-KCD
EVENTILE, INC. and FORPAC,
CLAIM CONSTRUCTION ORDER1
This is a patent case. Plaintiff Acufloor, LLC manufactures, markets,
and sells ceramic tiles and tools to aid in tile installation. That includes a
leveling system that helps tile installers produce flat floors and walls. The
Acufloor System includes leveling spacers and wedges like these:
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Acufloor accuses Defendants Eventile, Inc. and Forpac, LLC of infringing
patents it owns relating to the Acufloor System.
The parties disagree on the meanings of some parts of the patent claims.
The disputed claims fall into three categories: terms describing the leveling
spacer, terms describing the wedge, and design patent drawings. The Court
has carefully considered the parties’ briefs, exhibits, and oral arguments.
“The purpose of claim construction is to determine the meaning and
scope of the patent claims asserted to be infringed.” Kaufman v. Microsoft
Corp., 34 F.4th 1360, 1369 (Fed. Cir. 2022) (cleaned up). “A proper claim
construction provides a legal standard for the jury to apply[.]” Id. at 1370. But
“a sound claim construction need not always purge every shred of ambiguity.”
Bayer Healthcare LLC v. Baxalta Inc., 989 F.3d 964, 977 (Fed. Cir. 2021)
When construing claims, courts should give terms their “ordinary and
customary meaning[,]” that is, “the meaning that the term would have to a
person of ordinary skill in the art in question at the time of the invention[.]”
Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005). Courts primarily
look to intrinsic evidence to determine what a person with skill in the art would
have understood a term to mean. Id. at 1314. That includes the language of
the claims, the remainder of the specification, and the prosecution history. Id.
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Extrinsic evidence like expert testimony and dictionary definitions is less
reliable than intrinsic evidence, so courts should consider extrinsic evidence in
the context of the intrinsic evidence. Id. at 1319. “If the meaning of a claim
term is clear from the intrinsic evidence, there is no reason to resort to extrinsic
evidence.” Seabed Geosolutions (US) Inc. v. Magseis FF LLC, 8 F.4th 1285,
1287 (Fed. Cir. 2021).
Courts should not narrow a claim term beyond its plain and ordinary
meaning unless the intrinsic evidence supports the limitation. Wasica Fin.
GmbH v. Continental Auto. Sys., Inc., 853 F.3d 1272, 1281 (Fed. Cir. 2017). “If
the intrinsic record supports several different definitions of a term, the term
may be construed to encompass all such consistent meanings.” Id.
Terms describing the leveling spacer
The parties dispute the proper interpretation of five words or phrases
used to describe the leveling spacer in U.S. Patent No. 10,513,857 (the ‘857
Patent) and U.S. Patent 10,704,274 (the ‘274 Patent). The patents claim
Acufloor’s tile leveling devices and methods of using them. Claim 1 the ‘857
Patent exemplifies how four of the disputed terms—edge, corner, notch, and Ishaped base—are used in the patents, and how they relate to each other:
A tile leveling device and tile combination comprising:
a leveling device comprising:
a body defining an open window,
an I-shaped base orthogonally coupled to the body, the Ishaped base having spaced first, second, third, and fourth
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bars extending transversely from the body, the spaced first
and second bars extending to the front and outward of the
body and the spaced third and fourth bars extending to the
rear and outward of the body,
a first notch formed between the first and second bars, and
a second notch formed between the third and fourth bars;
a first tile over the first bar, the first tile having a first surface
opposite a second surface, the first tile having a first corner
over the first notch, the first corner having contact with
mortar at the first notch with edge-to-subfloor contact of first
corner-to-mortar-to-subfloor at the first notch, wherein the
first surface faces the first bar and the second surface is farther
from the first bar than the first surface;
(Doc. 1-2 at 14) (emphasis added).
a. Edge, corner, and notch
A single issue underlies the disputes about the meanings of edge, corner,
and notch. Defendants argue the device claimed in Acufloor’s patents must
allow tile-to-mortar contact up to the extreme edge of the tile, and they propose
constructions designed to make that limitation clear. So under Defendants’
proposed constructions, the “corner” of a tile is a point, the “edge” of a tile is a
line, and a “notch” must permit edge-to-mortar-to-subfloor contact. Acufloor
argues “corner” and “edge” are regions of a tile. It urges the Court not to
construe the terms but to allow the jury to apply the terms’ plain and ordinary
meanings. Acufloor proposes a construction of “notch” that does not include
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Before deciding the proper constructions of the disputed terms, the Court
will address the larger underlying issue. During prosecution of the ‘857 and
‘274 Patents, the applicants repeatedly distinguished their invention from tile
spacers in the prior art by showing that only their invention allowed for mortar
contact all the way to the very edge of the tile. (See, e.g., Doc. 93-6 and Doc.
93-4 at 9). The prior art allowed mortar to reach an area near the edge of the
tile, but according to the inventors that was not “edge-to-mortar-to-subfloor
contact.” (Doc. 93-6 at 14-15). In addition to making this distinction during
prosecution, the inventors amended Claims 1 and 10 of the ‘857 Patent by
adding the phrase “with edge-to-subfloor contact at the first notch” and “with
edge-to-subfloor contact at the second notch.” (Doc. 93-4). The inventors made
similar additions to Claim 5 of the ‘274 Patent. (Doc. 93-16).
The prosecution history vindicates Defendants on this point.
inventors relied on mortar-to-tile contact up to the very edge of the tile, rather
than an area near the very edge, to distinguish their invention from the prior
art. The inventors made this limitation explicit by adding the phrase “edge-tosubfloor contact” to its patent claims. For example, Claim 1 of the ‘857 Patent
states, “the first corner having contact with mortar at the first notch with edgeto-subfloor contact of first corner-to-mortar-to-subfloor at the first notch[.]”
(Doc. 1-2 at 14). Here, “edge-to-subfloor contact” clarifies that mortar reaches
the extreme edge of the tile at the corner and over the notch. Similarly, Claim
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5 of the ‘274 Patent clarifies that the notches provide “edge-to-mortar-tosubfloor contact[.]” (Doc. 1-4 at 14). Thus, the limitation is not inherent in the
definitions of “corner” or “notch.”
Having found that the patents use the term “edge” to state the limitation
at issue, the Court must choose a construction that most clearly communicates
the limitation to the jury. Eventile proposes, “the line that is the intersection
of two plane faces of a tile,” while Forpac proposes, “the line at which a surface
of a tile terminates.”
Both proposals accurately describe the Court’s
understanding of the term as used in the patents. The Court finds Forpac’s
proposal simpler and easier to understand. The Court thus construes the term
“edge,” when used in the phrases “edge-to-subfloor contact” and “edge-tomortar-to-subfloor contact,” to mean “the line at which a surface of a tile
terminates.” The Court will not construe “corner,” and it adopts Acufloor’s
proposed construction of “notch”: “opening intersecting an edge of the base
through which mortar can penetrate.”
b. I-shaped base
The ‘857 Patent describes the bottom portion of the levelling spacer as
an “I-shaped base having spaced first, second, third, and fourth bars extending
transversely from the body[.]” Defendants propose similar, but not identical,
constructions—both include a “thin, elongated central member” with shorter
bars extending from the ends. They argue the Court should construe “I-shaped
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base” because it is imprecise. The Court disagrees. The term, in the context
of the claims, is precise enough to communicate that aspect of the invention to
Defendants also argue that because the notches formed by the trunk and
crossbars of the base must allow for adequate mortar-to-tile contact, the Ishape must have certain general dimensional qualities to fulfill its function.
But the patent separately requires contact between mortar and tile at the
notches “with edge-to-subfloor contact[.]” (Doc. 1-2 at 14). The Court finds
that claim language, as construed above, adequate to describe the required
functionality of the notches. It would be redundant and confusing to include a
mortar-to-tile-contact limitation in the construction of “I-shaped base.”
The term “I-shaped” is susceptible to variations. But “absent a clear
disavowal or alternative lexicography” by the patentees, they were “free to
choose a broad term and expect to obtain the full scope of its plain and ordinary
meaning.” Wasica, 853 F.3d at 1282 (quotation marks and citation omitted).
The Court declines to adopt a narrowing construction of “I-shaped base.”
c. The “majority of an area” phrase
The parties offer competing constructions of this phrase from Claims 1,
5 and 8 of the ‘274 Patent: “the combination of the first notch and the second
notch providing a majority of an area of tile-to-mortar-to-subfloor contact for
the tile leveling device within the bounds of the base” (the “majority of an area”
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phrase). (Doc. 1-4 at 14-15). Acufloor argues the phrase describes the size of
the notches in comparison to other openings, while Defendants assert it
describes the size of the notches in relation to the solid portions of the base.
Acufloor points to the prosecution history to support its proposed
construction. But the document it cites favors Defendants. In an August 13,
2018 response and request for continued examination, the applicants added
the “majority of an area” phrase to their claims and used the phrase to
distinguish their invention from the prior art. The prior art device at issue had
openings in its base that allowed mortar to spread over the transverse member
of the base and adhere the tile to the transverse member. The notches in the
claimed device, on the other hand, allowed for a larger area of uninterrupted
subfloor-to-mortar-to-tile contact. In the words of the applicants, the claimed
design allowed “more adhesive to penetrate the opening and extend over a
greater surface area of the tiles” than the prior art. (Doc. 86-10 at 25). The
applicants gave no indication they contemplated other openings when adding
the “majority of an area” phrase.
The prosecution history thus confirms Defendants’ interpretation of the
“majority of an area” phrase. The limitation distinguishes Acufloor’s device
from the prior art because the Accufloor design allows a relatively large area
of direct contact between subfloor, mortar, and tile. Defendants submitted
different proposed constructions in their briefs, but at the hearing Eventile
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accepted Forpac’s construction. The Court thus construes the “majority of an
area phrase” to mean “the notches in the base collectively span an area that is
larger than the solid portions of the base.”
Terms describing the wedge
The parties have four disputes over the claim language describing
Acufloor’s wedge device.
a. “backstop member”
All four of Acufloor’s utility patents use the phrase “backstop member.”
The ‘857 and ‘274 Patents claim “a wedge device comprising: a backstop
member, and a wedge member extending from the backstop member…” (Doc.
1-2 at 14; Doc. 1-4 at 14). U.S. Patents 10,501,947 (the ‘947 Patent) and
10,704,271 (the 271 Patent) are a bit more descriptive. They claim as part of
a wedge device “a backstop member; a body having an attachment end, a
penetrating end, a top, and a bottom, the attachment end being coupled to the
backstop member…” (Doc. 1-1 at 13; Doc. 1-3 at 13).
Acufloor argues the plain and ordinary meaning of “backstop member”
applies, so the Court need not construe it. Eventile proposes this construction:
“a structure distinct from the wedge member that extends laterally outward
from the rear of the wedge member to provide additional surface area for
pushing the wedge device.”
(Doc. 94 at 26).
identical to Eventile’s.
Forpac’s proposal is almost
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Defendants claim their proposed construction will clarify three
properties of the backstop member. First, it states the backstop member is a
distinct structure, not merely the rear face of the wedge. That element of the
proposed construction is unnecessary. The term “backstop member” itself
communicates that it is more than just a rear surface. That the claims identify
the backstop member as an independent component of the wedge device makes
it even more clear.
Second, Defendants’ proposed construction expressly includes the
limitation that the backstop member “extends laterally outward.” Most of the
embodiments disclosed in the patents include a backstop that increases the
surface area of the rear of the wedge device, but not all of them do. Figures 11
and 15 of the ‘947 Patent show backstop members that appear flush with the
back of the wedge. (Doc. 1-1 at 8-9). Claim 8 of the ‘947 Patent also favors
Acufloor: “The wedge device as recited in claim 1, wherein the backstop
member has a larger surface area than the attachment end.” (Id. at 12). If the
inventors considered a backstop member inherently oversized, Claim 8 would
have been unnecessary. Defendants have not provided sufficient evidence to
support this limitation.
Third, Defendants propose the Court include the function of the backstop
But as established above, the backstop member does not
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necessarily increase the rear surface area of the wedge device. What is more,
this explanation is unnecessary. Any juror with a basic understanding of the
Acufloor system will understand that the user applies force to the backstop
The Court will not construe “backstop member.”
b. The wedge device preamble
Claims 9 and 10 of the ‘947 Patent and Claim 1 of the ‘271 Patent begin
with this preamble: “A wedge device for a tile leveling device including a clip
member, the wedge device comprising…” (Doc. 1-1 at 12-13; Doc. 1-3 at 12).
Eventile asks the Court to construe the preamble as a limitation that “requires
a wedge device including a clip member.”
(Doc. 94 at 28).
Accufloor, the preamble merely states an intended use for the wedge device
and is not limiting.
To understand this issue, it is important to understand the terms “clip
member” and “tile leveling device” as used in the patents. Both patents at
issue here include the following diagram of an example of a clip member:
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(Doc. 1-1 at 4; Doc. 1-3 at 4). And the patents refer to the clip member and the
wedge device together as a “tile leveling device.” (See, e.g., Doc. 1-3 at 11).
Preambles are generally not limiting. Summit 6, LLC v. Samsung Elecs.
Co., Ltd., 802 F.3d 1283, 1292 (Fed. Cir. 2015). That includes “preamble
language that merely states the purpose or intended use on an invention.” Id.
(cleaned up). But there are exceptions. A preamble generally is limiting “if it
recites essential structure or steps, or if it is necessary to give life, meaning,
and vitality to the claim.” Proveris Scientific Corp. v. Innovasystems, Inc., 739
F.3d 1367, 1372 (Fed. Cir. 2014) (quotation marks and citation omitted). And
“when limitations in the body of the claim rely upon and derive antecedent
basis from the preamble, then the preamble may act as a necessary component
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of the claimed invention.” Pacing Techs, LLC v. Garmin Int’l, Inc., 778 F.3d
1021, 1024 (Fed. Cir. 2015) (quotation marks and citation omitted).
The patents at issue bear hallmarks of a limiting preamble. The bodies
of each claim include “the penetrating edge being configured to penetrate the
clip member.” (See, e.g., Doc. 1-3 at 12). The “clip member” mentioned in the
body of each claim derives an antecedent basis from the preamble. And the
specifications emphasize the necessity of a clip member even when broadening
the scope of the patents: “It should be appreciated that although a particular
clip member is described and illustrated, the wedge device 10 presented herein
may work with a variety of clip members and the clip member selected will
depend on a number of manufacturing and design considerations.” (Doc. 1-1
at 11; Doc. 1-3 at 11).
That said, the preamble is not limiting in the way Eventile argues.
Under Eventile’s proposed construction, the preamble “requires a wedge device
including a clip member.” But the clip member is not part of the wedge device.
Rather, the wedge device and clip member are separate components of a tile
leveling device. The ‘947 and ‘271 Patents claim a wedge device, not a tile
leveling device. The limiting effect of the clip member lies in the design of the
wedge—the wedge is designed to penetrate a clip member. The clip member is
not a part of the wedge device, as Eventile’s proposed construction implies.
Because the body of each claim includes the limitation “the penetrating edge
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being configured to penetrate the clip member,” the preamble phrase does not
provide any additional limitation.2
Because the limitation stated in the preamble of each claim is duplicative
of a limitation in the body, the Court will not construe the preamble. See
Summit 6, 802 F.3d at 1292.
c. The “line-of-sight opening” phrase
Claim 10 of the ‘947 Patent includes the following description of an
opening in the claimed wedge device: “a line-of-sight opening extending along
the longitudinal axis and intersecting the longitudinal length from one-third
(1/3) of the longitudinal length measured from the attachment end to one-third
(1/3) of the longitudinal length measured from the penetrating edge[.]” (Doc.
1-1 at 13). Eventile purportedly proposes a construction that merely simplifies
the limitation for the jury: “a line of sight opening that extends one-third (1/3)
the distance of the longitudinal length of the wedge device measured starting
from a point that is 1/3 the distance from the attachment end to a point that is
one-third (1/3) of the distance from the penetrating edge.” (Doc. 94 at 29).
Eventile’s proposed construction is not significantly easier to understand
than the claim language.
But it is much more limiting. Both the claim
This conclusion is consistent with the prosecution history cited by Eventile, wherein the
examiner found: “The combination of all the elements of the claimed wedge device, in
particular the wedge device including a clip member, wherein a penetrating edge of the wedge
being configured to penetrate the clip member is not adequately taught or suggested in the
cited prior art of record.” (Doc. 94-13 at 7) (emphasis added).
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limitation and the proposed construction describe a line-of-sight opening in
relation to points 1/3 the length of the wedge measure from either end.
Eventile’s proposed construction requires the opening to terminate at the 1/3
points, while the claim teaches an opening that intersects those points.
Eventile offers no justification for this additional limitation.
The Court will not construe the “line-of-sight opening” phrase.
d. “inclined plane”
The ‘947 and ‘271 Patents use the term “inclined plane” to describe the
top surface of the wedge device. Acufloor and Eventile offer slightly different
Acufloor proposes “sloped surface,” and Eventile proposes
“sloped flat surface.”
Acufloor worries that “flat” undercuts the patents’
explicit claim of embodiments that include teeth along the top surface of the
wedge. Eventile argues “sloped flat surface” will ensure the jury understands
The Court finds that inclusion of the term “flat” would more likely
confuse than clarify. While “flat” does not necessarily mean “smooth,” a juror
could perhaps interpret it that way. That risk seems small, but the benefit of
including “flat” is even smaller. Given the figures in the patents and the
demonstrative evidence likely to be used at trial, a jury will understand that
the top surface of the claimed wedge device is flat rather than concave or
convex. The Court construes “inclined plane” as a “sloped surface.”
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Acufloor accuses Eventile of infringing two design patents, U.S. Design
Patent No. D832,680 (the ‘680 Design Patent) and U.S. Design Patent No.
D870,527 (the ‘527 Design Patent). Eventile asks the Court to construe the
design claims by adopting its proposed written descriptions of the figures.
Acufloor rejects the need to construe the design claims, and while it contests
the accuracy of Eventile’s descriptions, it provides no alternative language.
The Federal Circuit has “proposed that the preferable course ordinarily
will be for a district court not to attempt to construe a design patent claim” but
“also emphasized that there are a number of claim scope issues on which a
court’s guidance would be useful to the fact finder.” Richardson v. Stanley
Works, Inc., 597 F.3d 1288, 1293 (Fed. Cir. 2010).
Among them “is the
distinction between the functional and ornamental aspects of a design.” Id.
That is so because a design patent protects the ornamental design of an article
and not the functional elements. Id. at 1293-94.
Acufloor’s design patents claim two designs for wedge devices used in its
tile leveling system. The wedges are highly functional items, and the patents
explicitly disclaim certain elements, which are illustrated in the patent with
broken lines. It would be improper to allow Acufloor to extend the protection
of its design patents to the functional and disclaimed elements of the wedge
designs. See id. at 1294. However, the Court declines to adopt Eventile’s list
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of design elements, might encourage the jury to engage in an improper element
by element comparison rather than consider the overall design. The Court will
attempt to avoid that trap by referring the jury to the figures in the patents.
The Court construes the claim in Design Patent ‘680 as follows: The
ornamental design for a wedge-shaped device (Fig. 1) with a rectangular
bottom surface (Fig. 4), right angles where the bottom surface meets the front
and back surfaces (Fig. 2), a top surface sloped downward from back to front at
the angle shown in Fig. 2, and smooth areas on the front and back ends of the
top surface having the sizes and shapes shown in Figs. 1, 2, and 3. The wedge
has a vertical opening as shown in Fig. 4. The existence of the opening is not
part of the protected design, but the shape of the opening is. The rectangular
backstop at the rear of the wedge and the teeth along the top surface—both of
which are depicted in the figures with broken lines—are not part of the
Likewise, the Court construes the claim in Design Patent ‘527 as follows:
The ornamental design for a wedge-shaped device (Fig. 1) with a rectangular
bottom surface (Fig. 4), right angles where the bottom surface meets the front
and back surfaces (Fig. 2), a top surface with a smooth and level area at the
back having the size and shape shown in Figs. 1-3 adjoining a larger area
sloped downward from back to front at the angle shown in Fig. 2, and a smooth
front end of the sloped top surface having the size and shape shown in Figs. 117
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3. The wedge has a vertical opening as shown in Figs. 3-4. The existence of
the opening is not part of the protected design, but the shape of the opening is.
The shelf protruding from the bottom rear part of the wedge and the teeth
along the top surface—both of which are depicted in the figures with broken
lines—are not part of the protected design.
DONE and ORDERED in Fort Myers, Florida on November 21, 2022.
Copies: All Parties of Record
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