DCT
2:19-cv-10092
B & S Plastics Inc v. Custom Molded Products Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: B & S Plastics, Inc. dba Waterway Plastics (California)
- Defendant: Custom Molded Products, LLC (Delaware)
- Plaintiff’s Counsel: Cislo & Thomas LLP
- Case Identification: 2:19-cv-10092, C.D. Cal., 11/26/2019
- Venue Allegations: Venue is based on Defendant's alleged "regular and established, physical place of business" and distribution facility located within the Central District of California.
- Core Dispute: Plaintiff alleges that Defendant’s spa fixture lighting systems infringe patents related to integrated lighting assemblies for spa components like jets and valves.
- Technical Context: The technology concerns lighting systems that integrate light sources, such as LEDs, into the mounting hardware of spa fixtures to provide diffused, aesthetic lighting from the back of the spa wall to the water side.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendant with written notice of the ’523 Patent on December 4, 2018, and the ’707 Patent on September 11, 2019. The ’707 Patent is a continuation of the application that led to the ’523 Patent. Subsequent to the filing of the complaint, both patents underwent ex parte reexamination, resulting in the amendment of several claims, including the primary claims asserted as examples in the complaint.
Case Timeline
| Date | Event |
|---|---|
| 2014-03-24 | Priority Date for ’523 and ’707 Patents |
| 2018-12-04 | ’523 Patent Issued |
| 2018-12-04 | Plaintiff sends notice letter for ’523 Patent to Defendant |
| 2019-08-13 | ’707 Patent Issued |
| 2019-09-11 | Plaintiff sends notice letter for ’707 Patent to Defendant |
| 2019-11-26 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,145,523 - Spa Fixture Lighting System
- Patent Identification: U.S. Patent No. 10,145,523, "Spa Fixture Lighting System," issued December 4, 2018.
The Invention Explained
- Problem Addressed: The patent identifies a continuing need "to provide useful lighting in spa systems" beyond conventional solutions for control panels and general seating areas (’523 Patent, col. 1:16-18).
- The Patented Solution: The invention describes a lighting system assembly where a spa fixture, such as a jet or valve body, is seated within a "light transmissive grommet" that passes through the spa wall (’523 Patent, col. 2:53-65). This grommet has a circumferential recess or ports to hold a plurality of lights (e.g., LEDs), allowing their light to be diffused through the grommet material and provide accent lighting around the fixture on the water-facing side of the spa (’523 Patent, col. 9:20-27; Fig. 28). The system relies on a friction fit to secure the components.
- Technical Importance: This design integrates the lighting source directly with the fixture's mounting hardware, potentially simplifying manufacturing and installation while creating a uniform, diffused lighting effect.
Key Claims at a Glance
- The complaint asserts independent claim 5 as an exemplary claim (Compl. ¶14). This claim was amended during a subsequent ex parte reexamination.
- Amended Independent Claim 5:
- A spa shell wall having a water side and a back side;
- a light transmissive grommet extending through the spa shell wall, having a plurality of ports extending into an exterior side of the grommet, and having a lip that engages the spa shell wall and a portion that forms a first friction fit;
- a plurality of lights introduced into the ports, positioned closer to a radial center and spaced distal from the portion forming the first friction fit; and
- a spa fixture extending through the spa shell wall and seated in the grommet with a second friction fit.
- The complaint reserves the right to assert other claims, including dependent claims 6 and 9 (Compl. ¶¶16-17).
U.S. Patent No. 10,378,707 - Spa Fixture Lighting System
- Patent Identification: U.S. Patent No. 10,378,707, "Spa Fixture Lighting System," issued August 13, 2019.
The Invention Explained
- Problem Addressed: Like the parent ’523 Patent, this patent addresses the need for "useful lighting in spa systems" (’707 Patent, col. 1:18-20).
- The Patented Solution: This invention also describes a system using a grommet and a spa fixture, but the claims focus specifically on the mechanical and optical configuration. The solution involves a grommet that extends through the spa wall with a "first friction fit," is configured to transmit light from a light source, and receives a spa fixture that is seated with a "second friction fit" (’707 Patent, Abstract; col. 12:7-14).
- Technical Importance: The invention provides an alternative configuration for an integrated spa lighting assembly, emphasizing the dual friction-fit relationship between the grommet, the spa wall, and the spa fixture.
Key Claims at a Glance
- The complaint asserts independent claim 15 as an exemplary claim (Compl. ¶18). This claim was also amended during ex parte reexamination.
- Amended Independent Claim 15:
- A grommet for extending through a spa shell wall with a first friction fit, where the grommet has a lip for engaging the wall and a portion for forming the fit;
- said grommet configured to transmit light from a light source disposed on the grommet, with the light source positioned closer to a radial center and spaced distal from the portion forming the first friction fit; and
- a spa fixture for extending through the spa shell wall and seated in the grommet with a second friction fit.
- The complaint reserves the right to assert other claims (Compl. ¶18).
III. The Accused Instrumentality
Product Identification
The accused products are components of Defendant's SQR™ system, specifically the "SQR LED Lighting Grommet" and the "SQR™ Topside Valve" (Compl. ¶¶13, 15, 18).
Functionality and Market Context
- The complaint alleges the SQR LED Lighting Grommet is a "translucent grommet with four integrated ports to fit all standard spa LED light systems" (Compl. ¶19, citing Ex. 4 at 30). The SQR™ Topside Valve is identified as a "spa fixture" designed to be seated within the grommet (Compl. ¶¶15, 19).
- The complaint cites Defendant's product catalog to show that the accused SQR system is designed to simplify installation with fewer steps and tools, which Plaintiff connects to the claimed friction fit (Compl. ¶15, citing Ex. 1 at 3-4).
- The complaint alleges these products are sold and offered for sale throughout the United States, including from a distribution facility in the Central District of California (Compl. ¶¶5, 12, 16).
IV. Analysis of Infringement Allegations
’523 Patent Infringement Allegations
| Claim Element (from Amended Independent Claim 5) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a spa shell wall having a water side and a back side | The accused SQR™ Topside Valve and SQR LED Lighting Grommet are described as an assembly that is attached to a spa shell wall. | ¶15 | col. 2:53-54 |
| a light transmissive grommet extending through the spa shell wall from the water side to the back side, the light transmissive grommet having a plurality of ports extending into an exterior side... | The "SQR LED Lighting Grommet" is alleged to be a "light transmissive grommet" that extends through the spa wall. It is described in marketing materials as a "translucent grommet with four integrated ports." The complaint references a product image in Exhibit 4 to show the ports. | ¶15, ¶19 | col. 10:20-31 |
| a plurality of lights introduced into the respective plurality of ports... | The SQR grommet is alleged to have ports that receive a "plurality of lights." | ¶15 | col. 10:20-22 |
| a spa fixture extending through the spa shell wall and seated in the light transmissive grommet with a second friction fit | The "SQR™ Topside Valve" is alleged to be a spa fixture that extends through the spa wall and is "seated in the light transmissive grommet with a friction fit." The complaint cites marketing materials that state the system is designed to "greatly simplify the install process with fewer steps and fewer tools required" as evidence of this fit. | ¶14, ¶15 | col. 9:51-54 |
’707 Patent Infringement Allegations
| Claim Element (from Amended Independent Claim 15) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a grommet for extending through a spa shell wall with a first friction fit... | The "SQR LED Lighting Grommet" is alleged to be a grommet that extends through a spa shell wall with a "first friction fit." | ¶19 | col. 12:7-8 |
| said grommet configured to transmit light from a light source... | The SQR LED Lighting Grommet is described as a "translucent grommet" that "creates soft, colorful light with no hots spots for attractive and subtle lighting accent," which allegedly meets this limitation. | ¶19 | col. 12:9-10 |
| a spa fixture for extending through the spa shell wall, the spa fixture configured for seating in the grommet with a second friction fit | The "Topside Control Valve" is alleged to be a spa fixture that seats in the grommet with a "second friction fit." The complaint relies on the same general descriptions of the product assembly to support this element. | ¶19 | col. 12:11-14 |
- Identified Points of Contention:
- Scope Questions: A central question will be the interpretation of "first friction fit" and "second friction fit" as required by the amended claims. The complaint alleges a general "friction fit." The court will need to determine if the accused products' assembly involves two distinct friction fits—one between the grommet and the spa wall, and another between the spa fixture and the grommet—that meet the claim language.
- Technical Questions: The amended claims introduce specific positional requirements for the lights (e.g., "positioned closer to a radial center... and spaced distal from the portion... that forms the first friction fit"). The complaint's allegations are based on general marketing descriptions of "four integrated ports." A key factual question is whether the accused product's physical construction meets these specific spatial limitations added during reexamination.
V. Key Claim Terms for Construction
The Term: "friction fit" (including "first friction fit" and "second friction fit")
Context and Importance: This term is the core of the claimed mechanical interface. The infringement analysis for both patents hinges on whether the connection between the grommet/wall and the fixture/grommet constitutes one or two distinct "friction fits." Practitioners may focus on this term because its construction will determine whether a simple press-fit assembly meets the potentially more complex structure required by the claims.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification does not provide an explicit definition, which may support an argument for applying the term's plain and ordinary meaning to encompass any connection secured by resistance between surfaces.
- Evidence for a Narrower Interpretation: The summary of the invention in the ’523 Patent states the spa fixture is seated "with a compression fit so that the compression fit provides the spa shell wall grommet with a compression fit" (’523 Patent, col. 2:63-65). A party could argue that this language implies "friction fit" requires a specific "compression fit," potentially narrowing its scope.
The Term: "light transmissive grommet"
Context and Importance: The grommet must be "light transmissive" for the system to function as claimed. The dispute may turn on the degree and nature of light transmission required.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification suggests flexibility, noting the material can be "clear plastic" or "opaque such as white plastic" if used with a clear gasket, and can also be filled with plastic having a "colored pigment" (’523 Patent, col. 4:52-64). This could support a broad definition that includes translucent materials.
- Evidence for a Narrower Interpretation: The patent describes the goal as achieving "more uniform redistribution of the light" and diffusing light from discrete sources (’523 Patent, col. 2:13-14). A party could argue this functional language requires specific optical properties beyond simple translucence, potentially narrowing the term to materials that achieve a particular level of diffusion.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendant contributes to and induces infringement by providing "instructions and information... to end users and/or installers in CMP product literature, technical guides, manuals, [and] online videos" (Compl. ¶¶27, 34).
- Willful Infringement: Willfulness is alleged based on pre-suit knowledge. The complaint asserts that Defendant knew of the ’523 Patent since at least December 4, 2018, and the ’707 Patent since at least September 11, 2019, via written notice letters, and is not known to have altered its products since receiving notice (Compl. ¶¶21-22).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim scope and the impact of reexamination: The asserted claims were amended after the complaint was filed to include more specific limitations, such as the distinction between a "first" and "second" friction fit and the precise spatial location of the lights. A key question is whether the accused system, as described in the complaint, can satisfy these narrower, amended claim terms.
- A second issue will be one of claim construction: The case will likely turn on the definition of "friction fit." The court’s interpretation will determine whether the single act of seating the accused components together, as alleged in the complaint, can be parsed into the two distinct "friction fits" now required by the amended claims.
- A key evidentiary question will be one of technical proof: The complaint relies heavily on marketing materials to allege infringement. It remains an open question whether the technical reality of the accused product's construction—specifically the location of its LEDs relative to its central axis and mounting lip—matches the specific geometric limitations added to the claims during reexamination.