Välinge signs several major agreements — offers extended patent protection to its licensees for resilient flooring

Viken, Sweden

In March 2021 Välinge has entered into agreements with Shaw Industries, Windmöller, and Classen — securing further extended patent protection (EPP+) for its licensees manufacturing flooring products with mineral-based or thermoplastic-based cores such as LVT, WPC, SPC, MgO, and non-PVC based floorings. These agreements remove the future legal and commercial uncertainty for producers and distributors in the flooring market.

”Innovation in this category of flooring has been phenomenal — and has happened at an incredible rate — in recent years. A natural consequence of that is industry leaders developing and patenting overlapping technologies — which cause blocking effects that can threaten the continued success and growth of resilient flooring,” says Per Nygren, EVP of Välinge Innovation. “With these agreements, and the others signed in recent years, we have safeguarded the right for our licensees to continue to successfully offer Välinge technology in innovative and beautiful products for their consumers.

Since 2012, Välinge has been the licensor of certain Classen patent rights related to fold-down installation technology. Välinge has now entered into an agreement with Classen, giving Välinge the right to offer further non-assertion protection on Classen patent rights related to new materials, such as resilient, for product build-up, certain processes, and locking systems.

Välinge and USFloors signed a cross-license agreement in 2016, giving Välinge the right to sub-license the IP they had developed related to WPC products. USFloors merged into Shaw in 2017. Välinge has now signed a cross-license agreement with Shaw, giving Välinge the right to a broader IP portfolio.

Furthermore, Välinge has secured the right to sub-license certain Windmöller patents related to, among others, multi-layered PVC products with locking systems and decorative grooves in those products. The previous legal disputes between Välinge/Windmöller and involved licensees have consequently finally come to an end.

Välinge remains the sole proprietor and licensor of its 2G Angling, 5G-i™ Push Down, and 5G® Fold Down technologies — and also for Liteback™, 5G® Climb™, and 5G® Dry™ which are rapidly gaining interest and traction in the market.

These agreements — together with the comprehensive Välinge patent portfolio and the existing agreements with companies such as Unilin, i4F, Vertex, and CFL — form an Extended Patent Protection (EPP+) that is offered to Välinge’s licensees to benefit from turnkey solutions including product build-up, processes, locking systems and design features in resilient flooring products.

Another milestone in patent protection for our licensees

Today’s EPP+ announcement is the latest in a long line of agreements to offer our licensees comprehensive patent protection.

In 2015, Välinge signed a non-assertion agreement with Unilin, giving Välinge the right to offer non-assertion undertakings in respect of Unilin patent rights — including Pergo, IVC, and Balterio IP rights related to resilient products, processes, and locking systems. In 2019, Unilin filed a complaint before the International Trade Commission (ITC) which led to a general exclusion order in September 2019 preventing any unlawful importation of vinyl products that infringe upon certain Unilin patents identified in the complaint. The three patents asserted in the ITC procedure are part of the non-assertion agreements that Välinge offers its licensees signing up for EPP+.

In 2019, Välinge also signed a settlement and non-assertion agreement with i4F on certain patents for floor coverings with a thermoplastic or mineral-based core — known commercially as LVT, WPC, SPC, and MgO flooring. Signing this settlement ended a period of legal and commercial uncertainty in the flooring market for producers and distributors. As a result, both parties withdrew from all pending litigation disputes that were on-going in the United States and Europe.

As an early and innovative player in the multi-layered flooring sector, in 2019 CFL received a series of composition patents relevant for certain multilayered flooring and patents relevant for flooring with MgO (Magnesium Oxide) core and a locking system. In 2020, Välinge entered into an agreement with CFL for the semi-exclusive licensing rights for this IP.

These cross-license and non-assertion undertakings are a result of Välinge’s pro-active IP strategy which aims to reach agreements with other patent holders in areas protected by overlapping patents — this aims to eliminate uncertainties on the market, reduce legal consequences for licensees and their customers, and to accelerate the introduction of new technologies and products in our industry.

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