An intellectual property legal dispute involving two Chicago glazing companies has embroiled some major contractors and project owners.
The civil action involves Talon Wall Holdings, Entekk Group Ltd. and Chicago Heights Glass in litigation against Reflection Window & Wall (RWW), Joel Phelps, Pepper Construction Co., Provident Group UIC Surgery Center, Lendlease Construction Inc., 1400 Land Holdings and others, for alleged patent infringement.
A March 17 amendment to the original patent infringement case filed in December, 2021 lists four counts of the defendants’ alleged patent infringement, the US Glass News Network (USGNN) reported on March 21.
“The first and third counts claim infringement of U.S. patents dealing with the façade system in question. The second count alleges infringement on U.S. patents regarding installation methods, and the fourth alleges patent infringement of the RWW system.”
In a January news release, Chicago Heights Glass, Inc., which describes itself as “a longstanding leader in commercial high-rise façade construction in the Chicago metropolitan area”, and related entities says they “filed a multi-count, federal patent infringement lawsuit against former employee Joel J. Phelps and Reflection Window & Wall, LLC (RWW), and others.”
“The plaintiffs, including Chicago Heights Glass, Inc., Talon Wall Holdings, LLC, and Entekk Group Ltd., patented a revolutionary exterior aluminum and glass wall construction system for commercial buildings, known as Talon Wall®, which greatly reduces the labor, material, and installation costs for curtain wall systems on high-rise buildings. They are marketing and installing it nationwide. The Talon Wall system is stronger, less expensive, and easier to install than traditional façade systems. According to the lawsuit, Phelps and RWW have created and have installed a knock-off building façade called “Uwall or “U-8000” that incorporates the patented Talon Wall system. The lawsuit further alleges that the defendants knowingly violated the Talon Wall patents.
“Contracts to construct exterior façade walls for commercial medium and high-rise structures are frequently worth $5-50 million. The lawsuit seeks damages and asks the court to enjoin the defendants from using the patented Talon Wall System. According to the lawsuit, additional contracts to use the knock-off system have been proposed by the defendants for planned high-rise buildings in Chicago and elsewhere.
“For many years, high-rise buildings have been enclosed in aluminum and glass facades using systems developed decades ago. Chicago Heights Glass Inc. President Kurt LeVan invented the Talon Wall system, which differs significantly from traditional methods by attaching prefabricated glass and aluminum panels to the building floor slabs in a unique fashion. Installing prefabricated aluminum and glass panels this way makes them stronger, easier to fabricate, and easier to install by much smaller work crews. The Talon Wall system is therefore superior to and dramatically less expensive than traditional methods, and the Talon Wall system has become the preferred standard for many high-rise construction projects.
“The lawsuit alleges that former Chicago Heights employee Phelps left the company abruptly in June of 2020. According to the lawsuit, he had substantial knowledge regarding the technical details, advantages, and market opportunities for the Talon Wall system. The lawsuit also states that Phelps was obligated to return certain materials to Chicago Heights but failed to do so. The lawsuit adds that armed with the confidential information about the Talon Wall system, Phelps was promptly hired by RWW, a direct competitor.
“The lawsuit further alleges that: “With full awareness that the Talon Wall System was a patented and superior product to anything being offered by RWW, Phelps both individually and in his capacity as an executive officer of RWW, along with RWW, created knock-off systems.”
“The lawsuit also names as defendants several construction companies and building owners, including: Pepper Construction Co., Provident Group UIC Surgery Center, LLC, LendLease (US) Construction Inc., 1400 Land Holdings, LLC, and others. According to the complaint, the UI Outpatient Surgery Center located at 1009 South Wood Street in Chicago was built with the knock-off system, and a new building at 1400 South Wabash is under contract to use the patent-infringing system.
“LeVan devised and developed the Talon Wall System over a period of years and went through the rigorous U.S. patent process. The company will continue to vigorously defend its intellectual property against such violations, including against contractors and building owners that use it,” the statement said.
The defendants filed a motion in response saying the lawsuit was filed by the plaintiffs with the intention of causing harm to RWW’s standing in the industry.
“Plaintiffs declined to identify specific patent claims or allege facts supporting infringement. In fact, they cannot plausibly allege infringement, and they know it,” a court document filed by the defendants in support of their motion reads. “But Plaintiffs sued anyway so that they could wield the lawsuit as a cudgel in the industry, casting meritless aspersions on Talon Wall’s competitor RWW, for example, through a direct email campaign they launched that is already causing harm.”
“RWW emphatically denies that its U8000 UWALL system infringes any Entekk patent claims and will vigorously defend against this unfounded lawsuit,” USGNN quoted Rodrigo d’Escoto, RWW founder and president, as saying. “As a developer of building facade systems for over 20 years and a company that makes considerable investments toward product development, the U8000 UWALL will be seen as a disruptive innovation in the industry with a design that can offer significant advantages over conventional curtainwall systems … RWW is confident that it will prevail in this lawsuit and that facts will come to light which will establish how the UWALL system is different and better than competing curtainwall offerings. We look forward to having our day in court and presenting a full and complete account of the facts.”