Russo Trading Co Inc v. Qep Co Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Russo Trading Company, Inc. (Wisconsin)
  • Defendant: Q.E.P. Co, Inc. (Delaware)
  • Plaintiff’s Counsel: HANSEN REYNOLDS LLC
• Case Identification: 2:26-cv-00221, E.D. Wis., 02/10/2026
• Venue Allegations: Plaintiff alleges venue is proper based on a 2021 non-disclosure agreement in which both parties expressly consented to the exclusive venue of the U.S. District Court for the Eastern District of Wisconsin for any related disputes.
• Core Dispute: Plaintiff alleges that Defendant’s tile leveling system infringes a utility patent and a design patent related to tile lippage removal systems, further alleging breach of contract and trade secret misappropriation arising from a prior business relationship.
• Technical Context: The technology concerns mechanical systems used during tile installation to ensure a uniform, level surface by preventing "lippage," the condition where adjacent tiles are set at different heights.
• Key Procedural History: The complaint alleges the parties had an established business relationship, including two non-disclosure agreements (NDAs) executed in 2021 and 2023 for supply discussions and potential acquisition talks, respectively. Plaintiff alleges Defendant used confidential information obtained during these dealings to develop the accused products after terminating a private-label supply arrangement. These allegations of pre-suit interactions and direct communication regarding the patents form the basis for the willfulness claims.

Case Timeline

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

U.S. Patent No. 9,322,185 - "Tile Lippage Removal System"

The Invention Explained

• Problem Addressed: The patent’s background section identifies shortcomings in prior art tile leveling devices, noting that they can apply unwanted lateral forces that push tiles apart and can mar the tile surface during tightening (’185 Patent, col. 1:10-23).
• The Patented Solution: The invention is a multi-component system designed to apply only downward leveling force. It consists of a spacer post (with a base, a spacer, and a threaded shaft), a threaded cap that screws onto the post, and an anti-friction plate that sits between the cap and the tiles (’185 Patent, col. 2:32-34). The anti-friction plate is designed to prevent marring and prohibit lateral movement of the system relative to the tiles, while the threaded engagement of the cap and post avoids lateral pressure on the tiles themselves (’185 Patent, col. 3:10-12). The cap may also include sight holes to allow the installer to view the tile spacing during leveling (’185 Patent, col. 2:54-55).
• Technical Importance: This approach allows for precise tile leveling without disturbing tile spacing or damaging delicate tile surfaces, addressing key challenges in achieving a professional finish, especially with large or expensive tiles.

Key Claims at a Glance

• The complaint asserts independent claims 1, 7, and 13, and all dependent claims 2-6, 8-12, and 14-18 Compl. ¶46 Compl. ¶102
• Independent Claim 1 Essential Elements:
  • A spacer post having a base member, a spacer member, and a threaded shaft.
  • A threaded cap with a female thread sized to receive the threaded shaft.
  • An anti-friction protection plate with a threaded shaft opening and two opposed slots, sized to receive the spacer post and threaded shaft.
  • The anti-friction plate is adapted to prohibit lateral movement relative to two adjacent tiles.

U.S. Reissued Design Patent No. RE49,567 - "Tile Lippage Post"

The Invention Explained

• Problem Addressed: Design patents protect aesthetics rather than solving technical problems. This patent seeks to protect a unique, non-functional ornamental appearance for a tile lippage post.
• The Patented Solution: The patent claims the specific ornamental design for a "tile lippage post" as illustrated in its single figure (’567 Reissue Patent, Claim; ’567 Reissue Patent, Description). The protected design encompasses the overall visual impression created by the post's specific combination of shapes, contours, and proportions, including the base, the spacer element, and the threaded shaft.
• Technical Importance: The commercial value of a design patent lies in establishing a distinct, recognizable product appearance that consumers may associate with a particular source or level of quality, separate from its utilitarian function.

Key Claims at a Glance

• As a design patent, it contains a single claim: "The ornamental design for a tile lippage post, as shown and described" (’567 Reissue Patent, Claim).

III. The Accused Instrumentality

Product Identification

The accused products are Defendant QEP’s "Lash® 360 Tile Leveling System" and its components, which the complaint alleges include a "threaded cap," a "threaded spacer post" (also referred to as "Tile Leveling Stems"), and an "anti-friction plate" referred to as the "Tile Leveling System Protection Plate" (Compl. ¶¶100-101; Compl. ¶111).

Functionality and Market Context

The complaint alleges the Lash® 360 system is a two-part system comprising a spin cap and spacer post used to level large format tiles Compl. ¶44 The complaint includes a screenshot from a QEP video showing the yellow threaded cap and white threaded spacer post Compl. p. 14 It further alleges that QEP recommends the use of its separate "Protection Plate" with the system to "protect soft tile and marble surfaces from possible scratches" Compl. ¶45 The complaint positions this product as a direct competitor launched by QEP after it ceased purchasing a private-label version of Plaintiff's system, allegedly leveraging confidential business information to do so (Compl. ¶¶42-43; Compl. ¶48).

IV. Analysis of Infringement Allegations

The complaint references claim chart exhibits (Exhibits E and F) that were not attached to the publicly filed document. The following analysis is constructed based on the narrative allegations and visual evidence within the complaint.

'185 Patent Infringement Allegations

• Identified Points of Contention:
  • Scope Questions: Claim 1 is directed to a three-element system. The complaint alleges QEP sells a "threaded cap and a threaded spacer post" and separately "recommends" the use of an "anti-friction plate" (Compl. ¶¶100-101). A central question may be whether QEP directly infringes by selling or offering for sale the complete three-part combination, or if Plaintiff's case will depend on a theory of indirect infringement (e.g., inducement) based on QEP's instructions to end-users to combine the separately available components.
  • Technical Questions: A key technical dispute may arise over whether the opening in the accused "Protection Plate" meets the "threaded shaft opening and two opposed slots" limitation of Claim 1. The complaint includes an image of the accused plate, which appears to feature a single, continuous, shaped opening rather than a central hole with two distinct slots extending from it Compl. p. 25 The interpretation of this claim language relative to the accused design will be critical.

'567 Reissue Patent Infringement Allegations

The complaint alleges that QEP's "Tile Leveling Stem" is "substantially similar and/or identical in all material aspects to the claimed ornamental design" of the ’567 Reissue Patent Compl. ¶112 Infringement of a design patent is assessed from the perspective of an "ordinary observer." The dispute will turn on a visual comparison between the design shown in the patent's figure and the physical appearance of the accused spacer post. The primary point of contention will be whether the overall visual impression of the two designs is substantially the same, such that an ordinary observer would be deceived into thinking the accused product is the patented design.

V. Key Claim Terms for Construction

• The Term: "an anti-friction protection plate" (Claim 1, '185 Patent)

  • Context and Importance: This term is critical because the plate is a required element of the asserted system claim. The complaint alleges the accused plate is a recommended, and possibly optional, accessory Compl. ¶101 The construction of this term, and its role within the claimed system, will influence whether infringement can be established directly or must be proven indirectly.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent abstract states the system "preferably includes" the three components, which may suggest the plate is not strictly essential to the broadest conception of the invention (’185 Patent, abstract).
    • Evidence for a Narrower Interpretation: Claim 1 explicitly recites the plate as a limitation. The specification distinguishes the invention from prior art by highlighting the plate's function of preventing marring and lateral movement, suggesting it is a key feature of the patented solution (’185 Patent, col. 1:19-23; ’185 Patent, col. 3:10-12).

• The Term: "two opposed slots" (Claim 1, '185 Patent)

  • Context and Importance: This term defines the specific structure of the opening in the anti-friction plate. Infringement will depend on whether the physical structure of the opening in QEP's "Protection Plate" falls within the scope of this language. Practitioners may focus on this term because the visual evidence in the complaint suggests a potential mismatch between the claim language and the accused product's design Compl. p. 25
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: A party might argue the term should be interpreted functionally to cover any opening shape that receives the non-circular spacer member and thereby prevents rotation or lateral movement, even if it is a single continuous opening.
    • Evidence for a Narrower Interpretation: Claim 1 recites a "threaded shaft opening and two opposed slots," implying distinct structural features. Figure 4 of the patent illustrates a central circular opening (36) from which two separate slots (within opening 38) appear to extend, which could support an argument that the claim requires a more complex geometry than the single cutout shown in the accused plate (’185 Patent, Fig. 4).

VI. Other Allegations

• Indirect Infringement: The complaint alleges that QEP "expressly recommends for use" its "Protection Plate" with the Lash® 360 Tile Leveling System Compl. ¶101 This allegation of affirmative instruction to users provides a basis for a claim of induced infringement of the system claims of the ’185 Patent, should the components be sold separately.
• Willful Infringement: The complaint alleges a detailed history of pre-suit knowledge. It claims QEP had actual knowledge of the ’185 Patent as early as September 2021 from licensing discussions Compl. ¶104 and knowledge of the ’567 Reissue Patent from acquisition-related due diligence in 2023 Compl. ¶114 Crucially, the complaint alleges that on April 8, 2025, a QEP executive explicitly acknowledged awareness of Russo Trading's patents while stating an intent to proceed with a competing product, which is a strong factual allegation supporting willfulness Compl. ¶42 Compl. ¶114

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

• A core issue will be one of claim construction: Can the phrase "a threaded shaft opening and two opposed slots," which suggests a multi-part structure, be construed to cover the accused anti-friction plate's single, continuous, shaped cutout? The outcome of this definitional dispute will likely determine infringement of the asserted utility patent.
• A second central question will be one of infringement liability: Does Plaintiff have evidence that QEP sells the three required components of the claimed system as a single unit, supporting direct infringement? If not, the case for the ’185 patent may turn on whether QEP's recommendations and instructions to users are sufficient to prove induced infringement.
• Finally, for the design patent, the case will present a question of visual identity: From the viewpoint of an ordinary observer in the tile trade, is the overall ornamental appearance of QEP's spacer post substantially the same as the claimed design, or are there sufficient visual differences to distinguish the two and avoid infringement?