2:26-cv-00221
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., 07/15/2026
- Venue Allegations: Venue is asserted to be proper based on a forum selection clause in a 2021 non-disclosure agreement (NDA) between the parties, wherein they expressly waived objections to venue in the Eastern District of Wisconsin for disputes arising from the subject matter of the NDA.
- Core Dispute: Plaintiff alleges that Defendant's tile leveling system infringes a utility patent and a design patent related to tile lippage removal technology, and further alleges breach of contract and trade secret misappropriation following a prior business relationship and failed acquisition discussions.
- Technical Context: The technology involves mechanical systems used by tile installers to ensure a flat, uniform surface by preventing "lippage," where the edge of one tile is higher or lower than an adjacent tile.
- Key Procedural History: The complaint details a prior business relationship where Defendant purchased private-label versions of Plaintiff's products. This relationship was governed by at least two NDAs (2021 and 2023), the latter of which was for the purpose of acquisition due diligence. Plaintiff alleges Defendant used confidential information obtained during this period to develop and market its own competing and infringing products after acquisition talks failed. A design patent-in-suit, the ''567 Reissue Patent, was reissued from an original patent during the parties' interactions.
Case Timeline
| Date | Event |
|---|---|
| 2015-05-21 | ''185 Patent Priority Date |
| 2015-05-21 | '567 Reissue Patent Priority Date |
| 2016-04-26 | '185 Patent Issue Date |
| 2017-08-31 | Original Design Patent D856,111 Filing Date |
| 2019-08-13 | Original Design Patent D856,111 Issue Date |
| 2021-07-12 | 2021 NDA Effective Date |
| 2021-09-01 | Approximate date Defendant allegedly gained knowledge of '185 Patent |
| 2022-01-01 | Approximate date Defendant began ordering private-label version |
| 2023-05-04 | 2023 NDA Execution Date |
| 2023-07-04 | '567 Reissue Patent Issue Date |
| 2025-04-08 | Defendant allegedly informs Plaintiff it will manufacture its own components |
| 2025-10-01 | Approximate Accused Product Launch Date (Fall 2025) |
| 2026-07-15 | Complaint Filing Date |
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 notes that existing tile leveling devices can apply not only a desired downward force but also an unwanted lateral force US 9,322,185 B1, col. 1:15-18 This lateral force can push tiles apart, creating inconsistent grout lines, and the tools can also mar or scratch the tile surface during tightening US 9,322,185 B1, col. 1:20-22
- The Patented Solution: The invention is a multi-component system designed to apply only downward pressure. It consists of a threaded spacer post placed under and between tiles, a threaded cap that spins down the post to apply leveling force, and a separate "anti-friction protection plate" US 9,322,185 B1, abstract This plate is placed between the rotating cap and the tile surface, intended to isolate the tile from the cap's rotational friction and prevent both scratching and lateral movement US 9,322,185 B1, col. 2:55-59 US 9,322,185 B1, col. 4:10-13
- Technical Importance: This design aims to provide a more precise and less damaging method for tile leveling, improving the final aesthetic quality and structural integrity of a tiled surface US 9,322,185 B1, col. 1:23-27
Key Claims at a Glance
- The complaint asserts claims 1-18 of the '185 Patent Compl. ¶46
- Independent Claim 1 requires:
- A "spacer post" comprising 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 specific opening ("threaded shaft opening and two opposed slots") sized to receive the post and shaft.
- A functional requirement that the plate "is adapted to prohibit lateral movement relative to two adjacent tiles" when resting on them.
- The complaint does not explicitly reserve the right to assert dependent claims, as it asserts all claims 1-18.
U.S. Reissue Patent No. RE49,567 - Tile Lippage Post
The Invention Explained
- Problem Addressed: As a design patent, the '567 Reissue Patent does not solve a technical problem but protects the novel, non-obvious, and ornamental appearance of an object.
- The Patented Solution: The patent claims the specific ornamental design for a "tile lippage post," as depicted in the patent's single figure US RE49,567 E, FIG. 1 The scope of protection is defined by the visual impression of the post's shape and configuration, not its function US RE49,567 E, claim
- Technical Importance: This patent protects the aesthetic and visual branding of a key component of the tile lippage system, distinguishing it from competitors' products in the marketplace Compl. ¶18
Key Claims at a Glance
- The complaint asserts the single claim of the '567 Reissue Patent Compl. ¶47 Compl. ¶112
- The claim is for "The ornamental design for a tile lippage post, as shown and described."
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are Defendant QEP's "Lash® 360 Tile Leveling System," which includes a threaded cap and a threaded spacer post, and a separately sold but recommended "Tile Leveling System Protection Plate" Compl. ¶100 Compl. ¶101
Functionality and Market Context
The complaint alleges that QEP's Lash® 360 system is used for leveling tiles and includes components "substantially similar" to Plaintiff's patented system Compl. ¶44 A YouTube video still in the complaint shows the accused yellow spin cap and white threaded post Compl. ¶44 The complaint alleges that QEP recommends that users of its Lash® 360 system also use the "Tile Leveling System Protection Plate" to "protect soft tile and marble surfaces from possible scratches" Compl. ¶45 The complaint further alleges that QEP markets this system to retailers and distributors that Plaintiff identified to QEP under an NDA, positioning it as a direct competitor to Plaintiff's Spin Doctor® system Compl. ¶52
IV. Analysis of Infringement Allegations
'185 Patent Infringement Allegations
The complaint's theory of infringement for the '185 Patent appears to be based on the combined use of the Lash® 360 Tile Leveling System with the separately sold Tile Leveling System Protection Plate, which QEP allegedly instructs and encourages customers to do Compl. ¶¶126-128
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a spacer post includes a base member, a spacer member and a threaded shaft... | Defendant QEP manufactures, uses, and sells a tile lippage removal system that includes a "threaded spacer post." A visual of this component is provided in the complaint. | ¶100 | col. 2:34-40 |
| a threaded cap includes a female thread formed through a center of thereof... | Defendant QEP's accused system includes a "threaded cap" designed to work with its threaded spacer post. | ¶100 | col. 2:47-55 |
| an anti-friction protection plate includes a threaded shaft opening and two opposed slots... | Defendant QEP manufactures, uses, and sells an "anti-friction plate referred to by QEP as 'Tile Leveling System Protection Plate'" and recommends its use with the Lash® 360 system. The complaint includes images of two variations of this plate. | ¶101 | col. 2:55-59 |
| wherein said anti-friction protection plate is adapted to prohibit lateral movement relative to two adjacent tiles when said anti-friction protection plate rests thereupon. | Defendant QEP's product literature allegedly describes its protection plate as a "buffer" that "protects tile surfaces from possible scratches during tightening," which aligns with the function of preventing marring that arises from relative movement between the cap and tile. The complaint alleges literal infringement of this limitation. | ¶102; ¶127 | col. 4:10-13 |
'567 Reissue Patent Infringement Allegations
The infringement allegation for the '567 Reissue Patent is based on the visual appearance of the accused product. The complaint alleges that the "spacer post of QEP's revised Lash® 360 Tile Leveling System has a substantially similar appearance to the ornamental design claimed by the '567 Reissue Patent" Compl. ¶47 The legal test for infringement will be whether, in the eye of an ordinary observer, the accused design is substantially the same as the patented design, such that the observer would be induced to purchase one supposing it to be the other Compl. ¶112 The complaint includes a video still showing the accused post, which will be the primary evidence for this comparison Compl. ¶111
Identified Points of Contention
- Scope Questions ('185 Patent): A primary issue will be whether QEP's actions constitute direct infringement of the "system" claim. Since QEP allegedly recommends that the protection plate be used but sells it separately Compl. ¶128, a question arises as to whether QEP itself ever "makes," "uses," or "sells" the complete claimed system. This may shift the focus of the case to the allegations of induced infringement.
- Technical Questions ('567 Reissue Patent): The infringement analysis will be a visual one, comparing the accused QEP spacer post Compl. ¶44 to the design claimed in the '567 Reissue Patent. The dispute will likely focus on whether the differences in shape, proportion, and surface ornamentation between the two designs are significant enough to be apparent to an ordinary observer, thereby avoiding infringement.
V. Key Claim Terms for Construction
Term: "anti-friction protection plate" ('185 Patent, Claim 1)
- Context and Importance: This element is central to the patent's stated solution for preventing tile marring and is a required component of the claimed system. As QEP allegedly sells its "Protection Plate" separately from its main leveling system Compl. ¶128, the construction of this term will be critical for determining whether the accused combination of products infringes the claim.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification suggests the plate is a distinct component that can be added to other systems, stating, "The anti-friction protection plate may be added to existing tile lippage removal systems with round threaded caps" US 9,322,185 B1, col. 2:59-62 This could support an argument that its identity is not rigidly tied to being sold in one package.
- Evidence for a Narrower Interpretation: Claim 1 recites the plate as an integral part of the "tile lippage removal system" and describes its opening with structural specificity ("threaded shaft opening and two opposed slots"). A defendant might argue that only a plate meeting this exact structural description and sold as part of the system meets the claim.
Term: "tile lippage removal system" ('185 Patent, Claim 1 preamble)
- Context and Importance: While preamble terms are not always limiting, the relationship between this term and the claim body will be significant. Practitioners may focus on this term because if it is deemed limiting, it could require all claimed elements (post, cap, and plate) to be supplied by a single entity as a unified "system" to constitute direct infringement.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Plaintiff may argue that a "system" is defined by its intended function and the cooperative action of its parts, regardless of how they are packaged or sold. The complaint's focus on QEP's instructions to combine the parts supports this view Compl. ¶¶127-130
- Evidence for a Narrower Interpretation: Defendant may argue that in the context of commercial sales, a "system" is what is offered under a single product identity or SKU. Since it allegedly sells the protection plate "separately" Compl. ¶128, it may contend that it does not sell the claimed "system."
VI. Other Allegations
Indirect Infringement
The complaint makes strong allegations of induced infringement of the '185 Patent. It asserts that QEP actively encourages and instructs its customers to infringe by combining the Lash® 360 system with the separately sold protection plate. Evidence cited includes a "Product Data Sheet," website marketing, and product packaging that all allegedly recommend using the protection plate with the system Compl. ¶¶127-130 The complaint includes an image from QEP's packaging that explicitly states, "Protection plates are recommended when using Tile Leveling Systems" Compl. ¶129
Willful Infringement
The complaint alleges willfulness for both patents based on pre-suit knowledge. For the '185 Patent, it alleges QEP had knowledge since at least September 2021 from licensing discussions and was expressly told of its infringement on April 8, 2025 Compl. ¶104 Compl. ¶42 For the '567 Reissue Patent, it alleges QEP knew of the reissue application in 2023 and had notice of the patent no later than April 8, 2025 Compl. ¶114 The allegations are set against a backdrop of a failed business relationship, which Plaintiff asserts demonstrates a deliberate decision to infringe.
VII. Analyst's Conclusion: Key Questions for the Case
- A central issue for direct infringement of the '185 utility patent will be one of system constitution: does QEP "make" or "sell" the claimed "system" when its allegedly essential "protection plate" is sold as a separate, optional accessory? The resolution of this question will determine the importance of the induced infringement claim, which appears to be substantially supported by the instructional materials cited in the complaint.
- A key question for the '567 design patent will be one of visual similarity: from the perspective of an ordinary observer in the tile industry, are the ornamental features of QEP's spacer post "substantially the same" as the patented design, or are the visual differences sufficient to avoid a finding of infringement?
- Finally, the case presents a significant question of intent: given the detailed history of NDAs, access to Plaintiff's confidential business and technical data, and failed acquisition talks, the court will need to determine whether QEP's alleged infringement was willful and whether its actions constitute misappropriation of trade secrets, which could expose QEP to enhanced damages, disgorgement of profits, and attorney's fees.