United States District Court, W.D. Arkansas, Texarkana Division
PACIFIC COAST BUILDING PRODUCTS, INC. and PABCO BUILDING PRODUCTS, LLC PLAINTIFFS
CERTAINTEED GYPSUM MANUFACTURING, INC. DEFENDANT
O. Hickey, Chief United States District Judge
the Court is Defendant's Motion to Stay Proceedings. (ECF
No. 38). Plaintiffs have filed a response. (ECF No. 43).
Defendant has filed a reply. (ECF No. 46). Plaintiffs have
filed a sur-reply. (ECF No. 50). The Court finds this matter
fully briefed and ripe for consideration.
a patent infringement action. In addition to the highly
technical nature of patent litigation, this case presents a
particularly complex factual and procedural background
involving several different litigations, concerning several
different patents, fought amongst several different parties.
Therefore, for the sake of clarity, the Court endeavors to
set out the relevant facts as follows.
The Parties and Products at Issue
Pabco Building Products, LLC (“Pabco”) is in the
business of manufacturing building materials, including
gypsum wallboard and other types of drywall. Plaintiff
Pacific Coast Building Products, Inc. (“Pacific
Coast”) is a holding company that has no employees.
Pabco is a subsidiary of Pacific Coast. Both entities are
based primarily in the western United States and have
principal places of business in Rancho Cordova, California.
CertainTeed Gypsum Manufacturing, Inc. is a subsidiary of the
CertainTeed Corporation, which is headquartered in Malvern,
Pennsylvania. Like Pabco, Defendant is in the business of
manufacturing various drywall products. Defendant maintains a
manufacturing facility in Nashville, Arkansas.
case centers around sound dampening drywall panels which can
be cut and installed like standard drywall. Standard drywall
is cut and installed using the “score and snap”
method, which involves making a shallow cut on the surface of
the drywall-the score-then breaking the drywall along the
scored line-the snap. Standard drywall can be cut in this
fashion because it only has paper backing on the outer
surfaces. Sound dampening drywall was traditionally
manufactured by gluing two pieces of standard drywall
together, with paper on both the inner and outer surfaces.
However, the resulting laminated structure does not score and
snap like standard drywall because of these inner layers of
produces a sound dampening drywall panel called QuietRock
EZ-SNAP. EZ-SNAP can be scored and snapped like regular
drywall because the paper from the inner, glued surfaces has
been removed for this specific purpose. Defendant produces a
line of sound dampening drywall products under the brand name
SilentFX. One of Defendant's products, SilentFX QuickCut,
consists of a laminated panel featuring a viscoelastic
polymer between two gypsum panels that also cuts like
standard gypsum wallboard due to the lack of paper on the
inner surfaces of the panels. Plaintiffs claim that QuickCut
infringes on certain patents which Pacific Coast owns and
Pabco holds exclusive license to.
The Patents at Issue
case involves two patents: (1) U.S. Patent No. 10, 125, 492
(“the ‘492 patent”) entitled
“Acoustical Sound Proofing Material with Improved
Fracture Characteristics and Methods for Manufacturing
Same”; and (2) U.S. Patent No. 10, 132, 076 (“the
‘076 patent”) entitled “Acoustical Sound
Proofing Material with Improved Fracture Characteristics and
Methods for Manufacturing Same.” Both of the asserted
patents claim priority from U.S. Patent No. 9, 388, 568
(“the ‘568 patent”). As will become
relevant below, all three patents also include claims
reciting the term “scored flexural strength.” The
asserted patents and the ‘568 patent all relate to
drywall used for soundproofing. As mentioned above, typical
drywall is a composition of gypsum and other materials
encased in paper. These three patents claim a laminated panel
that is made by gluing together two gypsum boards with a
sound-dissipating adhesive. The two gypsum boards, however,
do not have any paper on the inner surfaces that are glued,
and thus, can be cut like conventional drywall.
The Four Litigations
The 2017 Northern District of California Action
Coast initially brought a patent infringement action against
CertainTeed Gypsum, Inc. (“CertainTeed Gypsum”),
a sister company of Defendant, in the Northern District of
California, alleging infringement of the ‘568 patent
and U.S. Patent No. 8, 181, 738 (“the ‘738
patent”) on March 3, 2017 (“the 2017
action”). On September 18, 2017, counsel for
CertainTeed Gypsum proposed a sixty-day standstill agreement,
wherein Pacific Coast would dismiss the case without
prejudice as the parties attempted to settle. According to
the terms of the standstill agreement, absent settlement,
Pacific Coast would re-file the lawsuit. On October 3, 2017,
Pacific Coast dismissed its case without prejudice so that
the parties could engage in settlement negotiations.
the 2017 action was dismissed, the court conducted an initial
case management conference and issued a case management
order. However, the court did not issue any substantive
orders or analyze the patents-in-suit or underlying factual
The 2018 Northern District ...