A lawsuit over fire-rated glass floor patent is ongoing in the U.S. District Court of the Northern District of California. Ely Holdings Ltd. and Greenlite Glass Systems have filed a complaint against O’Keeffe’s Inc., also known as Safti First, alleging that Safti First has directly and indirectly infringed upon Ely’s patent.

The Original Complaint

Ely Holdings’ complaint, filed in November 2018, gives background into the patent and outlines how Safti First allegedly infringed upon it.

In April 2010, the U.S. Patent & Trademark Office awarded Ely Holdings Ltd., a U.K.-based company, a patent for “Fire Rated Glass Flooring,” referred to as the 475 patent throughout the original complaint.

Ely Holdings alleges that in October 2014, Safti First began manufacturing and selling fire-rated glass flooring that fell within the scope of one or more claims of Ely’s 475 patent. It is called  the GPX FireFloor System.

Ely’s counsel sent a letter to William O’Keeffe, CEO of O’Keeffe’s and Safti First, in February 2018 informing him that Ely had become aware of what it alleged to be patent infringement without authorization from Ely. The letter requested that O’Keeffe’s provide written assurance that it had ceased selling the fire-rated glass flooring system. The next month, O’Keeffe’s counsel responded denying the infringement claims.

Ely Holdings alleges in the first count that Safti First has directly infringed multiple claims of the 475 patent and has made no efforts to alter its products to avoid infringement. In the second count, Ely accuses Safti First of inducing others to infringe upon the 475 patent by instructing and encouraging third parties to install, market or distribute the GPX FireFloor System and related materials.

The company claims that the patent infringement has caused harm in the form of “price erosion, loss of goodwill, damage to reputation, loss of business opportunities, lost profits, inadequacy of monetary damages, and direct and indirect competition.”

Ely Holdings seeks judgment against Safti First that it has directly and indirectly infringed the patent; injunctions against the company; an award of damages to compensate Ely for Safti First’s alleged past direct and indirect infringement; and an award of its costs and reasonable attorneys’ fees.

Safti First’s Counterclaim

In a counterclaim filed in response to the original complaint in November 2018, Safti First denied the direct and indirect infringement allegations. In its defense, the company alleged that Ely Holdings failed to state a claim for which relief may be granted, that the 475 patent is invalid under one or more provisions of Title 35 of the U.S. Code, and that Ely has not alleged any specific damages or irreparable harm arising from the alleged infringement.

Safti First seeks for Ely’s complaint to be dismissed without granting any of the relief requested.

Amended Complaints

In May 2019, Ely Holdings amended its complaint to include Greenlite Glass Systems, a Canadian company that distributes a fire-rated flooring system under the 475 patent, as a second plaintiff.

In its amended counterclaim, filed in May 2019 in response to Ely Holding’s amended complaint, Safti First made several allegations against Greenlite Glass Systems, including a count of violating the Lanham Act and unfair competition.

Safti First alleges that, in an effort to obtain “buy America” jobs, Greenlite made several misrepresentations including: “representing that it was supplying materials manufactured in America; that fire and safety floors could not be obtained from any American manufacturer; that it produced ‘the only exterior fire-rated glass floor/skylight system available in North America; that it made ‘the only exterior glazed system with an insulated glass assembly for North America; and, without any reasonable basis therefore, that Safti’s fire- and safety-related flooring violated the patent on Greenlite’s product.”

Safti First alleges that when the alleged claims were made by Greenlite, the company knew that the Liteflam product at issue was made in Europe, that Safti First sold a system made in the U.S., and that the product did not violate the 475 patent. Safti First claims that it has lost fire and safety glass flooring business due to these alleged actions.

“That conduct was unfair, deceptive, fraudulent and unlawful, and therefore constitutes unfair competition under California’s Business and Professions Code Section 17,200, and under the common law of the State of California,” reads the amended counter complaint.

Crown Corr’s Involvement

Glazing contractor Crown Corr was subpoenaed by Safti First in June 2019 to produce documents as evidence in the case. Crown Corr filed a motion to quash the subpoena in July 2019 in the U.S. District Court of the Northern District of Illinois, claiming that the request would impose undue burden, that Safti First cannot show a need for the requested documents, and that the documents are not relevant to the case.

“The subpoena should be quashed because it seeks, by its very terms, information within the possession or control of a litigant to the California Lawsuit, Greenlite. It imposes an undue burden on Crown Corr to respond to a cross-country, non-party subpoena, when Safti First could seek that same information from Greenlite. Crown Corr has no knowledge of or involvement in the California Lawsuit, and it is not clear to Crown Corr that the information sought is relevant to begin with. Even if it were, the requests seek a substantial amount of proprietary information,” reads the motion.

Crown Corr explains in the motion that it used a fire-rated glass product made by Vetrotech Saint-Gobain North America and distributed by Greenlite for the Transbay Terminal Project in San Francisco, also known as the Salesforce Transit Center. Safti First sought documents and extensive electronic records, according to Crown Corr, which claims that it does not have any information related to the validity or enforceability of any of Greenlite’s patents, or information related to whether Safti First infringed on any patents. It also claims the information is proprietary.

The motion has not yet been granted or dismissed.

Current Status

Both sides requested a trial by jury. However, the case is still in the discovery phase.

Ely Holdings and Greenlite Glass Systems filed a motion to dismiss Safti First’s claims that Greenlite violated the Lanham Act and unfair competition laws. A hearing for the motion was scheduled for August 16, 2019.

O’Keeffe provided USGNN™ with his comment on the case, saying, “We both have patents. I have a patent on my system and they have one on their system. We feel ours is a much more advanced and reserving patent. We don’t really understand their basis of claiming a suit against us. We feel it is an unjust lawsuit from a company in Canada that wants to keep us out of the floor business.”

Greenlite Glass declined to comment.