LAS VEGAS—Underlayment companies have traditionally been a relatively quiet bunch. Maybe it stems from the nature of the product they produce.
But just like every other product sector, the use of technology to help make products perform better and install easier has grown at a rapid pace in recent years. And while some companies have chosen to compete using ethical business practices and follow U.S. law when it comes to intellectual property rights, there are others trying to capitalize by infringing on patents and making false claims to make the sale.
Things came to a head at Surfaces when a group of suppliers who have taken the legal steps to obtain a license decided in conjunction with the patent holder this is the year they will stop the infringers in their tracks.
The patent is from Pregis and involves a unique lip and tape system. Matthew Heil, national accounts manager, flooring, said up to this point the company has tried to take the gentleman’s approach in protecting its patent and supporting its licensees, but now the gloves may have to come off. “Up until now we’ve been getting companies on board with licenses and sending out letters to infringers asking them to stop this illegal practice immediately,” Heil said. “But it looks like we’re going to have to get into litigation.”
He added that the company is prepared to do whatever it takes—from getting lawyers involved to even going to the International Trade Commission—to protect its intellectual property and the investment made by manufacturers that have legally paid to license the technology.
Those mills that have formed license agreements with Pregis applauded the company’s determination to protect the innovation and their investments. Jack Boesch, director of marketing for MP Global Products, said the fact so many companies are illegally copying the technology proves it is a true innovation with far-reaching impacts. “It’s a game- changing patent. But that’s the thing; Pregis is the owner of that patent. It has a legal right to market and sell it. MP has legally invested money in its technology and if other companies do not want to play by the same rules then we support any necessary action to stop them.”
Bob Cummings, flooring sales and marketing manager for Pak-Lite, agreed. “We’ve all been trying to find ways to educate the market about the patent, but it has gotten to the point were we need to put pressure on the violators. We have a good relationship with Pregis and support its efforts.”
For Giovanna Carchidi, regional account manager of Diversified Industries, it is still important to educate. “Education is part of our success, and this is one more avenue. We need to continually educate our distributors and retailers who, in turn, can educate consumers about what we’re putting into these products and why they are the best choice for them.”
What makes it frustrating, Heil said, is U.S. companies are on board. “They understand we’re trying to do the right thing, just like they are. Ethically, this is not something where we have a patent and then charge outrageous sums for a license. We’re allowing them to be competitive. The trouble is there is a lot of product coming in from overseas from companies that are not playing by the rules and we need to stop it before it gets out of control.”
He added that Pregis is fortunate to be owned by the private equity investment firm AEA, which “is not afraid to litigate. This is an avenue we would rather not go down but we have the money and backing to do what is necessary to create a long-term solution. If taking legal action is the way, then we are prepared.”
While patent infringement is nothing new, cushion companies said what they were seeing on the Surfaces show floor convinced them it was getting out of control and they needed to step up their efforts. Interestingly, it was not just from companies infringing on Pregis’ patent that was causing the uproar. From false claims on sound reduction properties to other misrepresentations, companies are saying “enough is enough.”
One of the biggest acts of falsification was a brochure that caught the attention of Cummings and the rest of the Pak-Lite crew. In it was a step-by-step illustration that supposedly showed how to install this particular company’s underlayment.
The problem? The entire sequence—photos and text— were lifted from an installation guide for one of Pak-Lite’s products that is posted on its website. Besides the obvious plagiarism that gave it away was the “installer” in the photos. “That’s me!” Cummings exclaimed. “I was the model for the photo shoot.” In fact, upon close inspection of one of the images, the company logo on his shirt can clearly be seen.
Both Heil and Boesch were also upset over the false sound reduction claims being made by a number of foreign companies. “We’re the acoustical experts,” Boesch said. “We know which are the proper tests and what is real when it comes to actual sound reduction properties. And what many of these companies are claiming are just not true.”
Heil added that they are “totally unrealistic.” To prove the point, during an interview with FCNews a lady representing one of the “problem” companies dropped off a flyer listing the various properties of her company’s underlayment. “There is no way to achieve these kinds of results—unless they were testing the product in a room with 10- foot-thick walls, floor and ceiling,” he said.