DCT
8:23-cv-01156
Danco Inc v. Fluidmaster Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Danco, Inc. (Delaware)
- Defendant: Fluidmaster, Inc. (California)
- Plaintiff’s Counsel: Thomas | Horstemeyer, LLP; J. Mark Holland & Associates
- Case Identification: 8:23-cv-01156, C.D. Cal., 06/28/2023
- Venue Allegations: Plaintiff alleges venue is proper because Defendant resides in the district, maintains a regular and established place of business in the district, and has committed alleged acts of infringement in the district.
- Core Dispute: Plaintiff alleges that Defendant’s toilet fill valves infringe three patents related to water-saving designs that utilize a separate, attachable flow regulator to control the amount of water used to refill the toilet bowl.
- Technical Context: The technology addresses water conservation in plumbing fixtures by enabling precise control over the bowl refill process, a significant source of water waste in conventional toilets.
- Key Procedural History: The asserted patents claim priority back to an application filed in 2004, indicating a long-term research and patenting effort. The complaint alleges that Defendant has had actual knowledge of the patent applications since at least 2012 and of the issued patents since at least 2015, which forms the basis for its willfulness allegations.
Case Timeline
| Date | Event |
|---|---|
| 2004-03-11 | Earliest Priority Date for '105, '993, and '698 Patents |
| 2014-01-27 | '993 Patent Application Filed |
| 2014-08-12 | '105 Patent Application Filed |
| 2015-08-11 | U.S. Patent No. 9,103,105 Issued |
| 2015-09-22 | U.S. Patent No. 9,139,993 Issued |
| 2019-11-18 | '698 Patent Application Filed |
| 2021-03-02 | U.S. Patent No. 10,934,698 Issued |
| 2023-06-28 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,103,105 - "Toilet Fill Valve"
The Invention Explained
- Problem Addressed: The patent’s background section notes that conventional toilet fill valves often supply "much more water than is necessary to fill the average toilet bowl," resulting in significant water waste (ʼ105 Patent, col. 1:10-15).
- The Patented Solution: The invention is a toilet fill valve system designed to conserve water by using a separate, attachable "bowl fill restriction." This component connects directly to a dedicated "bowl fill outlet port" that is integrally formed with the main valve body. The restriction receives water destined for the bowl and constricts its flow rate, allowing the refill volume to be optimized for a specific toilet, thereby preventing excess water from being lost down the drain (ʼ105 Patent, Abstract; col. 5:4-12).
- Technical Importance: The design provides a modular and adjustable method for water conservation in toilets, a significant consideration for both environmental and utility cost reasons (ʼ105 Patent, col. 1:10-15).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 24, as well as dependent claims 9 and 15 (Compl. ¶22a).
- Independent Claim 1 (a system) includes the following essential elements:
- A toilet fill valve with a body having an "extended portion" that is "integrally molded with the body" and "forms a bowl fill outlet port."
- A water inlet and a tank water outlet.
- A "bowl fill restriction configured to attach directly to the extended portion of the body."
- The bowl fill restriction includes a "protrusion that is configured to insert into a recess in the toilet fill valve to lock the bowl fill restriction."
- The restriction is configured to receive a second portion of water from the bowl fill outlet port and constrict its flow rate.
- A tube configured to attach directly to the bowl fill restriction to direct the water to a toilet tank overflow tube.
- The complaint does not explicitly reserve the right to assert additional claims.
U.S. Patent No. 9,139,993 - "Toilet Fill Valve"
The Invention Explained
- Problem Addressed: Similar to the ʼ105 Patent, the background describes the problem of conventional toilet fill valves wasting millions of gallons of water annually by providing more water than necessary to refill the toilet bowl after a flush (ʼ993 Patent, col. 1:21-28).
- The Patented Solution: The patent discloses a toilet fill valve where a separate "water flow regulator" attaches directly to an "extended portion" of the valve body. This extended portion functions as a dedicated "bowl fill outlet port." A portion of the regulator inserts into and contacts the extended portion, allowing it to receive and constrict the flow of water that refills the bowl, thus enabling water conservation (ʼ993 Patent, Abstract; col. 5:40-50).
- Technical Importance: This approach allows for a simplified main valve body design while providing a modular mechanism to customize water flow for conservation purposes, adaptable to different toilet models (ʼ993 Patent, col. 6:11-20).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 8, as well as dependent claim 14 (Compl. ¶22b).
- Independent Claim 1 (a system) includes the following essential elements:
- A toilet fill valve with a body having an "extended portion" that is "integrally molded with the body" and "forms a bowl fill outlet port."
- A water inlet and a tank water outlet.
- A "water flow regulator configured to attach directly to the extended portion of the body."
- A "portion of the water flow regulator is configured to insert into, and come into contact with, the extended portion of the body."
- The regulator is configured to receive a second portion of water from the bowl fill outlet port and constrict its flow rate.
- A tube configured to attach directly to the water flow regulator to direct the water to a toilet tank overflow tube.
- The complaint does not explicitly reserve the right to assert additional claims.
U.S. Patent No. 10,934,698 - "Toilet Valve"
Multi-Patent Capsule
- Patent Identification: U.S. Patent No. 10934698, "Toilet Valve", issued March 2, 2021 (Compl. ¶17).
- Technology Synopsis: This patent also addresses water waste during the toilet bowl refill cycle by disclosing a system with a toilet fill valve and a separate, attachable "bowl fill valve" (i.e., a flow regulator) ('698 Patent, col. 1:12-19). The invention focuses on the specific mechanical interface for this attachment, describing features like a protrusion that snap-fits into a recess to retain the bowl fill valve, and a slot that receives an extension from the toilet fill valve to prevent relative rotation ('698 Patent, Abstract).
- Asserted Claims: Independent claims 1 and 12, and dependent claim 17 (Compl. ¶22c).
- Accused Features: The complaint alleges that the Accused Products, as toilet fill valve systems, infringe the claims of the ’698 patent but does not detail specific features accused of infringing this patent distinctly from the others (Compl. ¶6, ¶22).
III. The Accused Instrumentality
Product Identification
- The Fluidmaster PRO45U, PRO45HR, 400H, 400AH, and 400H-002 toilet fill valves ("the Accused Products") (Compl. ¶4).
Functionality and Market Context
- The complaint alleges the Accused Products are toilet fill valves that include a main valve body with an integrally molded, extended portion forming a bowl fill outlet port (Compl. ¶29b). It is further alleged that these products utilize separate "diverter inserts (water flow regulators)" that attach directly to this extended portion (Compl. ¶29e). These inserts allegedly receive water from the port, constrict the flow rate, and deliver the water to a tube that directs it to the toilet’s overflow tube (Compl. ¶29e-f).
- The complaint alleges these products are sold under the Fluidmaster brand through major nationwide retailers, including Home Depot and Lowe's, and plumbing wholesalers (Compl. ¶20).
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
’105 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a toilet fill valve that comprises: a body comprising an extended portion, wherein the extended portion is integrally molded with the body, wherein the extended portion forms a bowl fill outlet port; | The Accused Products allegedly include a valve body with an extended portion that is integrally molded with the body and forms a bowl fill outlet port. | ¶29b | col. 5:4-9 |
| a water inlet configured to receive water from a water source; and a tank water outlet configured to provide a first portion of the water to a toilet tank during at least a portion of a flush cycle; | The Accused Products allegedly have a water inlet to receive water and a tank water outlet to provide water to the toilet tank. | ¶29c-d | col. 2:1-7 |
| a bowl fill restriction configured to attach directly to the extended portion of the body, wherein the bowl fill restriction comprises a protrusion that is configured to insert into a recess in the toilet fill valve to lock the bowl fill restriction to the extended portion of the body, wherein the bowl fill restriction is configured to receive a second portion... | The Accused Products allegedly include "diverter inserts (water flow regulators)" that attach directly to and insert into the extended portion of the valve body to receive a second portion of water. | ¶29e | col. 6:60-65 |
| wherein the restriction is configured to constrict a flow rate of the second portion of the water that flows through the bowl fill restriction; and | The diverter insert is allegedly configured to constrict the flow rate of the water that passes through it. | ¶29e | col. 5:31-33 |
| a tube that is configured to attach directly to the bowl fill restriction, wherein the tube is configured to direct the second portion of the water from the bowl fill restriction directly to a toilet tank overflow tube. | The Accused Products allegedly include a tube that attaches directly to the diverter insert to direct water to the overflow tube. | ¶29f | col. 4:25-29 |
Identified Points of Contention
- Scope Questions: A primary issue for claim construction may be the scope of "bowl fill restriction." The claim requires this restriction to have a specific locking mechanism: a "protrusion that is configured to insert into a recess." The infringement analysis may turn on whether the accused "diverter inserts" possess a structure that meets this limitation, or if there is a structural mismatch.
- Technical Questions: The complaint alleges the accused "diverter inserts" function as the claimed "bowl fill restriction." A key technical question will be whether the attachment method of the accused inserts meets the claim requirement of being "lock[ed]" via a "protrusion" and "recess," as opposed to another form of connection such as a simple friction fit.
’993 Patent Infringement Allegations
The complaint does not provide a detailed, element-by-element breakdown for the infringement of the ’993 Patent. It alleges that the Accused Products infringe at least claims 1, 8, and 14 (Compl. ¶22b). The infringement theory appears parallel to that for the ’105 Patent, focusing on the use of a separate, attachable "water flow regulator" that inserts into and contacts an extended port on the main valve body. Potential points of contention would likely mirror those for the ’105 Patent, centered on whether the accused "diverter inserts" meet the definition of the claimed "water flow regulator" and attach in the manner required by the claims.
V. Key Claim Terms for Construction
The Term: "bowl fill restriction" ('105 Patent) / "water flow regulator" ('993 Patent)
Context and Importance: These terms define the core inventive component—the separate, attachable part that controls water flow. The outcome of the case may depend on whether the accused "diverter inserts" are encompassed by the definition of these terms. Practitioners may focus on this term because the patents describe specific locking and coupling structures, and any mismatch with the accused device's structure could be a central point of dispute.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claims define the element functionally, for example, as being "configured to constrict a flow rate" ('105 Patent, cl. 1). The specification also refers to this component in general terms as a "separate component that is attached the body of the toilet fill valve" ('105 Patent, col. 5:1-3).
- Evidence for a Narrower Interpretation: The specifications disclose detailed embodiments of the restriction/regulator, including specific coupling mechanisms like a snap-fit with an "annular protrusion" and "annular groove" ('105 Patent, col. 6:60-65) or a J-shaped lock ('105 Patent, col. 7:25-29). This detailed disclosure of specific structures could be used to argue that the claim term should be limited to the disclosed embodiments or their equivalents.
The Term: "attach directly to the extended portion"
Context and Importance: This limitation defines the physical relationship between the main valve body and the flow regulator. The patent specifications distinguish the invention from prior art by highlighting this direct, modular connection. The infringement analysis will require determining if the connection in the Accused Products is "direct."
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term "directly" could be interpreted to mean "without any intervening functional components," which could encompass a variety of mating configurations where the regulator and port form a single functional unit.
- Evidence for a Narrower Interpretation: The patent figures consistently depict the regulator physically inserting into or onto the extended port itself, with immediate surface-to-surface contact between the two components (e.g., '105 Patent, Fig. 5B). An argument could be made that "directly" requires this immediate physical abutment, excluding arrangements with intermediate washers, gaskets, or other parts not explicitly claimed as part of the regulator.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement. Inducement is based on allegations that Fluidmaster provides "installation instructions" and other materials that direct and encourage customers to use the Accused Products in an infringing manner (Compl. ¶24, ¶39). Contributory infringement is based on allegations that the Accused Products were "especially made for" infringing use and have "no substantial non-infringing use" (Compl. ¶25, ¶49).
- Willful Infringement: Willfulness is alleged based on Fluidmaster's purported "actual knowledge" of the patent applications since at least 2012 and the issued patents since at least 2015, prior to the filing of the lawsuit (Compl. ¶38, ¶46).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim scope and construction: Can the terms "bowl fill restriction" and "water flow regulator," as described in the context of specific locking mechanisms (e.g., a "protrusion" inserting into a "recess"), be construed to cover the structure and attachment method of the accused "diverter inserts"?
- A key evidentiary question will be one of structural correspondence: What is the precise mechanical design of the Accused Products' "diverter inserts" and their connection to the valve body? The case will likely depend on factual evidence demonstrating whether this design maps onto the specific structural and relational limitations recited in the asserted independent claims.