I4F Licensing v. Kolay Flooring: Voluntary Dismissal With Prejudice in 128 Days
I4F Licensing N.V. filed suit in Nevada District Court against Kolay Flooring International and related entities, asserting two patents covering TripleLock and Click4U floor panel locking systems against Kolay’s SPC Click product line. The case closed in 128 days when I4F voluntarily dismissed all claims with prejudice before defendants answered — each side bearing its own costs.
Pre-Answer Settlement or Strategic Retreat in Nevada Flooring IP Dispute
On February 5, 2024, I4F Licensing N.V. — a Netherlands-based licensing entity holding patents on interlocking floor panel systems — filed suit in the U.S. District Court for the District of Nevada against Kolay Flooring International LLC, Kolay Holding LLC, and Modm Kolay Manufacturing LLC. The complaint alleged infringement of US8978336B2 and US10267046B2, patents covering the TripleLock (3L) and Click4U locking mechanisms, through Kolay’s SPC Click, SPC Click EVA, and SPC Click KAI flooring products.
The case closed on June 12, 2024 — just 128 days after filing — when I4F invoked Federal Rule of Civil Procedure 41(a)(1)(A)(i) to voluntarily dismiss all pending claims with prejudice. Critically, that rule permits unilateral dismissal only before the opposing party has served an answer or a motion for summary judgment, suggesting the defendants had not yet formally responded. The with-prejudice designation means I4F permanently surrenders the right to re-assert these specific claims against Kolay in any future action.
A with-prejudice voluntary dismissal before any substantive court ruling is commercially unusual and typically signals either a negotiated resolution reached outside the pleadings or a strategic decision to forgo litigation. The public record is silent on whether any licensing arrangement, settlement payment, or product design-around underpins the dismissal. The speed of resolution — and the absence of any cost award — is consistent with a mutually agreed exit rather than a unilateral plaintiff concession, though this cannot be confirmed from available filings.
Filing to Voluntary dismissal in 128 days
128-day lifespan — well below the median district court patent case duration of ~2.5 years
Dismissed with prejudice: what the Rule 41 exit means for both parties
Rule 41(a)(1)(A)(i) — plaintiff’s unilateral exit before answer
Federal Rule 41(a)(1)(A)(i) permits a plaintiff to dismiss an action without a court order by filing a notice before the defendant serves an answer or a motion for summary judgment. The fact that this rule was available confirms the Kolay defendants had not yet formally responded. Here, I4F exercised this right but elected to make the dismissal with prejudice — a choice that is not required by the rule and indicates deliberate finality.
Voluntary, pre-answer dismissalWith prejudice: I4F’s claims are permanently extinguished
A dismissal with prejudice operates as a final adjudication on the merits for claim-preclusion purposes. I4F cannot re-file suit against Kolay on the same infringement claims under US8978336B2 or US10267046B2. A without-prejudice dismissal would have preserved that option. The public record does not disclose what consideration, if any, Kolay provided in exchange for the with-prejudice designation — the distinction is legally significant but the underlying rationale remains undisclosed.
Claim preclusion appliesKolay exits with permanent protection from these infringement claims
The with-prejudice dismissal provides Kolay Flooring International, Kolay Holding, and Modm Kolay Manufacturing with a durable shield: I4F cannot revisit these patent claims in future litigation over the same accused products. With no cost award against either party, Kolay avoids any financial obligation from the proceeding itself. Whether Kolay modified its SPC Click product line or entered any licensing agreement as part of an exit deal is not reflected in the court record.
Permanent claim bar for defendantsLicensing leverage on these patents may shift post-dismissal
I4F’s with-prejudice exit against Kolay does not affect the patents’ validity or their enforceability against other flooring manufacturers. However, the dismissal removes Kolay as a courtroom test case for the TripleLock and Click4U claim scope. Competitors watching the case will note that I4F chose not to litigate to judgment, which could inform their own licensing negotiations with I4F — though the reasons behind I4F’s decision remain commercially sensitive.
Patent remains enforceable vs. othersFull party and counsel information
| Role | Name | Type | Detail |
|---|---|---|---|
| Plaintiff | I4F Licensing N.V. | Individual | Netherlands-based patent licensing entity — holder of US8978336B2 and US10267046B2Search in Eureka ↗ |
| Defendant | Kolay Flooring International, LLC | Company | Kolay Flooring International LLC and affiliates — manufacturer of SPC Click flooring productsSearch in Eureka ↗ |
| Co-Defendant | Kolay Holding, LLC | Company | Search in Eureka ↗ |
| Co-Defendant | Modm Kolay Manufacturing, LLC | Company | Search in Eureka ↗ |
| Plaintiff counsel | Anthony W. Brooks | Attorney | Counsel for I4F Licensing N.V.Search in Eureka ↗ |
| Plaintiff counsel | F. Christopher Austin | Attorney | Counsel for I4F Licensing N.V.Search in Eureka ↗ |
| Plaintiff counsel | John W. Mcilvaine | Attorney | Counsel for I4F Licensing N.V.Search in Eureka ↗ |
| Plaintiff counsel | Matthew T. Kramer | Attorney | Counsel for I4F Licensing N.V.Search in Eureka ↗ |
| Plaintiff counsel | R. Scott Weide | Attorney | Counsel for I4F Licensing N.V.Search in Eureka ↗ |
| Plaintiff law firm | The Webb Law Firm PC | Law Firm | Representing I4F Licensing N.V.Search in Eureka ↗ |
| Plaintiff law firm | Weide & Miller, Ltd. | Law Firm | Representing I4F Licensing N.V.Search in Eureka ↗ |
| Presiding judge | Judge N/A | Judge | Nevada District CourtSearch in Eureka ↗ |
Official order — verbatim text
The dismissal notice invokes Rule 41(a)(1)(A)(i) and explicitly states the action is dismissed with prejudice, with each party bearing its own fees. The with-prejudice election is the operative legal fact: it forecloses any future claim by I4F against these Kolay entities on the same patents and products. The mutual cost-bearing provision is neutral and offers no signal as to which party’s position was stronger. No merits ruling, claim construction, or validity determination was issued, leaving the patents’ enforced scope undefined in this jurisdiction.
US8978336B2 & US10267046B2 — Interlocking Floor Panel Locking Systems
US8978336B2 (Application No. US14/251766) and US10267046B2 (Application No. US15/835864) both protect innovations in floor panel locking and coupling technology. These patents sit within the mechanically engineered click-lock flooring segment — specifically covering the geometry, movement, and interlocking behaviour of panel edges that enable tool-free installation and resistance to vertical and horizontal displacement. I4F’s TripleLock (3L) and Click4U branding corresponds to the locking architectures described in these patent families.
Locking-system patents in the flooring sector carry significant commercial weight because they sit at the core of SPC (stone plastic composite) and LVT product differentiation. Manufacturers that cannot access a proprietary locking profile must either licence it — often through entities like I4F — or engineer a demonstrably non-infringing alternative. With SPC flooring commanding growing global market share, the enforceability and claim breadth of these two patents is a material concern for any manufacturer or brand entering the North American market with click-lock products.
Should you run an FTO against US8978336B2 and US10267046B2?
Any company designing, importing, or distributing SPC, LVT, or laminate flooring with a click-lock or push-lock coupling system should treat these patents as priority FTO targets. I4F has demonstrated enforcement activity in U.S. federal courts, and the locking-system claims in both patents have not been narrowed by any U.S. claim-construction ruling — meaning the full breadth of the as-granted claims remains potentially operative against competing products. This is especially relevant for manufacturers entering the U.S. market with proprietary locking profiles.
PatSnap Eureka’s FTO Search Agent lets R&D and IP teams map claim elements from US8978336B2 and US10267046B2 against your specific locking geometry, identify file-history estoppels, and surface prior-art references that may limit claim scope. Eureka also tracks the full I4F patent portfolio and citation networks, enabling proactive monitoring of continuation filings and divisionals that could extend coverage into adjacent locking architectures.
Run a freedom-to-operate analysis on US8978336B2 to assess your product’s exposure
Run FTO in Eureka →Similar Floor Panel Locking System Patent Cases in U.S. District Courts
Cases involving click-lock and interlocking floor panel patents in U.S. district courts, including comparable I4F and competing locking-system enforcement actions.
What this case signals for the flooring locking-system IP landscape
A fast, with-prejudice exit before any defendant answer raises pointed questions about I4F’s enforcement strategy and the commercial value of these locking-system patents.
Pre-answer dismissal with prejudice often signals an off-record resolution
When a plaintiff elects to dismiss with prejudice before the defendant even answers, it typically suggests something was exchanged — whether a licence, a design-around commitment, or a business relationship — that made continued litigation unnecessary. Pure strategic retreat usually produces a without-prejudice filing to preserve optionality. IP teams monitoring I4F’s enforcement activity should treat this outcome as consistent with a negotiated exit.
The patents remain live enforcement tools against other flooring competitors
US8978336B2 and US10267046B2 are not invalidated or narrowed by this dismissal. I4F retains full rights to assert them against other manufacturers of interlocking SPC and click-lock flooring. Any company with overlapping click-lock or push-lock flooring technology should conduct an FTO review against these application families, particularly given I4F’s demonstrated willingness to file in U.S. district courts.
N.V. v Kolay — key questions answered
I4F Licensing N.V. filed suit against Kolay Flooring International LLC and two related entities in the District of Nevada on February 5, 2024, asserting infringement of US8978336B2 and US10267046B2 through Kolay’s SPC Click flooring products. The case was voluntarily dismissed with prejudice by I4F on June 12, 2024 — 128 days after filing — before the defendants had answered. Each party bears its own costs.
A dismissal with prejudice operates as a final adjudication on the merits for claim-preclusion purposes. I4F cannot re-file these specific infringement claims against the named Kolay entities based on US8978336B2 or US10267046B2. The patents themselves remain valid and enforceable against other parties, but Kolay has permanent protection from re-litigation of these particular claims.
The complaint targeted Kolay’s SPC Click, SPC Click EVA, and SPC Click KAI flooring product lines, as well as flooring products incorporating the 3L TripleLock and Click4U locking systems. These are stone plastic composite (SPC) click-lock floor panels distributed under the Kolay brand.
No. The case ended before any substantive ruling, claim construction, or validity determination. Both patents remain as-granted, and their enforced claim scope in U.S. courts is untested by this proceeding. I4F retains full rights to assert them in future actions against other parties.
The public record does not disclose the underlying reason. A with-prejudice voluntary dismissal before any defendant response is consistent with a negotiated resolution — such as a licensing agreement or a product design-around commitment — that made continued litigation unnecessary. A purely strategic retreat would typically produce a without-prejudice dismissal to preserve future options. The actual terms of any off-record arrangement, if one exists, are not reflected in court filings.
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