DCT
8:23-cv-01544
Solar Sun Rings Inc v. P & P Imports LLC
I. Executive Summary and Procedural Information
- Case Name: Solar Sun Rings, Inc. v. P&P Imports, LLC
- Parties & Counsel:
- Plaintiff: Solar Sun Rings, Inc. (California)
- Defendant: P&P Imports, LLC (California)
- Plaintiff’s Counsel: ORBIT IP, LLP
- Case Identification: 8:23-cv-01544, C.D. Cal., 12/26/2023
- Venue Allegations: Venue is asserted on the basis that the Defendant is a California company residing in the district, maintains a regular and established place of business in the district, and has conducted business activities, including the alleged acts of infringement, within the district.
- Core Dispute: Plaintiff alleges that Defendant’s passive solar heating products for pools and spas infringe a patent related to the construction of floating solar heaters.
- Technical Context: The technology concerns floating, flexible vinyl covers designed to use solar energy to heat swimming pool water while remaining stable on the water's surface.
- Key Procedural History: This filing is a First Amended Complaint. The complaint alleges that Plaintiff has marked its products with the patent-in-suit since shortly after its issuance. It further alleges that no claims of the patent-in-suit were amended during prosecution, a fact that could be relevant to any analysis under the doctrine of equivalents by potentially limiting the applicability of prosecution history estoppel. The complaint also establishes post-suit knowledge of the patent as of the service of the original complaint on October 3, 2023.
Case Timeline
| Date | Event |
|---|---|
| 2004-06-24 | U.S. Patent No. 8342167 Priority Date |
| 2004-12-01 | Plaintiff's Product Launch (approximate, "at least as early as") |
| 2013-01-01 | U.S. Patent No. 8342167 Issue Date |
| 2023-10-03 | Original Complaint Served on Defendant |
| 2023-12-26 | First Amended Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,342,167, FLOATING SOLAR HEATER WITH STABILIZING BAND, issued January 1, 2013
The Invention Explained
- Problem Addressed: The patent's background describes an issue with prior art floating solar heaters where inflating the device's central portion causes it to shrink radially. This shrinkage pulls inward on the inflatable outer ring, causing it to buckle upwardly, which lifts the heater off the water, reducing heating efficiency and making it vulnerable to wind. (’167 Patent, col. 1:35-52).
- The Patented Solution: The invention proposes stabilizing the outer ring to resist this inward-pulling force. One embodiment achieves this by constructing the outer ring with a "vertical band of film" on its radially inward side, which acts as a structural reinforcement to prevent buckling. (’167 Patent, col. 2:1-4). An alternative embodiment, shown in Figure 8 of the patent, describes cutting the upper film of the outer ring and inserting a separate "additional band 100 of film" to create a vertical structure that serves the same anti-buckling function. (’167 Patent, col. 5:1-15).
- Technical Importance: The described solution aims to improve the functional stability and heat-transfer efficiency of passive solar pool heaters by ensuring they remain flat and in maximum contact with the water surface during use. (’167 Patent, col. 1:53-58).
Key Claims at a Glance
- The complaint asserts infringement of all nineteen claims of the patent, with detailed allegations for independent claims 1, 8, and 14. (Compl. ¶¶31, 34, 38).
- Independent Claim 1 recites, in part:
- A soft, flexible, floating solar heater comprising an inner portion and an inflatable outer ring.
- The outer ring includes a "radially inward side" which itself comprises a "vertical band of film" that has a lower edge connected to the "inner peripheral bond" of the inner portion.
- Independent Claim 8 recites, in part:
- A soft, flexible, floating solar heater comprising a lower film and an upper film bonded together to form an inner portion and an outer ring.
- The upper film is "cut at or outwardly adjacent said inner peripheral bond."
- A "band of film" is "positioned in the cut" with its lower edge bonded to the inner cut edge or inner peripheral bond and its upper edge bonded to the outer cut edge, thereby forming the inflatable outer ring.
- The claim also requires "valve means for selectively controlling ingress and egress of gas."
- The complaint reserves the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
- The accused products are the "GoFloats Inflatable Solar Pool Heaters," sold under brands such as GoFloats® and marketed for "Affordable Pool Heating and Insulation." (Compl. ¶¶36-37).
Functionality and Market Context
- The accused products are described as octagonal, passive solar heaters for pools and spas, constructed with a transparent upper vinyl layer and a dark blue lower vinyl layer. (Compl. ¶¶27, 36). The complaint alleges the products are "virtually identical" to the Plaintiff's own "Solar Sun Rings™" product in appearance and construction. (Compl. ¶25). The complaint includes an annotated photograph of the accused product, showing an inflatable central portion with spot welds and an inflatable outer ring. (Compl. p. 9). The products are sold in the U.S. through Defendant's website and on Amazon.com. (Compl. ¶¶36-37).
IV. Analysis of Infringement Allegations
The complaint provides infringement allegations for multiple claims, including through detailed, annotated photographs. The analyses for independent claims 1 and 8 are summarized below.
’167 Patent Infringement Allegations (Claim 1)
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| an inflatable outer ring enclosing a chamber including: a radially inward side comprising: | The accused product has an inflatable outer ring (labeled N) with a radially inward side (labeled F). An annotated photograph depicts the accused product's outer ring. (Compl. pp. 9, 13). | ¶38 | col. 2:32-34 |
| a vertical band of film having a length equal to the length of said inner peripheral bond and having a lower edge connected to said inner peripheral bond; and an upper edge; and | The product has a "vertical band of film G" at the inner peripheral bond "B", with a lower edge "H" connected to bond "B" and an upper edge "I". The complaint pleads infringement under the doctrine of equivalents if the band is not considered "vertical". | ¶38 | col. 6:60-64 |
| a radially outward side of film enclosing said chamber between said upper edge of said vertical band and said lower edge of said band. | The product's outer ring has a radially outward side (labeled K) that encloses the inflatable chamber between the upper edge "I" and lower edge "H" of the vertical band G. | ¶38 | col. 6:65-67 |
’167 Patent Infringement Allegations (Claim 8)
| Claim Element (from Independent Claim 8) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| said upper film being cut at or outwardly adjacent said inner peripheral bond so as to have an inner cut edge and an outer cut edge; | The transparent upper film of the accused product is alleged to be non-continuous, with a portion that "stops exactly at the inner peripheral bond B," creating a cut with an inner and outer edge. (Compl. p. 20). | ¶38 | col. 6:42-45 |
| a band of film having a width, an upper edge, a lower edge, and a length equal to the length of said inner peripheral bond; | The product is alleged to have a "band of film labelled G" with the requisite features. An annotated photograph highlights the accused product's structure. (Compl. p. 20, p. 28). | ¶38 | col. 6:46-49 |
| said band of film positioned in the cut in said upper film wherein said lower edge is bonded to said inner cut edge or to said inner peripheral bond and said upper edge is bonded to said outer cut edge to form an inflatable outer ring... | The complaint alleges band G is positioned in the cut, with its lower edge bonded along the inner peripheral bond B and its upper edge bonded to the outer cut edge of the upper film, forming the outer ring. An annotated image depicts the alleged bonds. (Compl. pp. 19, 21). | ¶38 | col. 6:49-56 |
| valve means for selectively controlling ingress and egress of gas... | The accused product has valves (labeled C and E) for inflating the central portion and outer ring. The complaint provides a photograph showing these valves. (Compl. p. 21). | ¶38 | col. 6:57-61 |
- Identified Points of Contention:
- Structural Questions: A primary point of contention may be whether the accused product's construction literally meets the claim limitations. The complaint alleges the accused product's outer ring is formed from a transparent upper film, a blue lower film, and a separate "band of film G" that forms the inner wall of the ring. (Compl. p. 13, p. 20). A dispute may arise over whether this structure constitutes a "vertical band of film" as part of a "radially inward side" (Claim 1) or a "band of film positioned in the cut in said upper film" (Claim 8).
- Doctrine of Equivalents: The complaint frequently pleads infringement under the doctrine of equivalents in the alternative for several elements, including the "vertical" nature of the reinforcing band and the method of bonding films together. (Compl. pp. 12, 13, 20). This suggests an anticipation that the accused product's specific construction may not be a literal match, raising the question of whether it is nonetheless equivalent in function, way, and result to the claimed invention.
V. Key Claim Terms for Construction
The Term: "vertical band of film" (from Claim 1)
- Context and Importance: This term is the central feature of the Claim 1 embodiment, designed to provide buckling resistance. The infringement analysis for Claim 1 will depend on whether the inner wall of the accused product's outer ring (labeled "G" in the complaint's diagrams) is construed as a "vertical band of film." Practitioners may focus on this term because the complaint preemptively argues for an equivalents read. (Compl. p. 13).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent states the purpose of the band is to "resist the inward pull" from the central portion's inflation and "prevent buckling." (’167 Patent, col. 5:13-15). A party may argue that any film structure oriented to serve this specific anti-buckling function at that location meets the definition.
- Evidence for a Narrower Interpretation: Figure 8 and its description detail a "band 100" as a distinct piece of film with a "width 101" that creates a "vertical webbing." (’167 Patent, col. 5:11-16). This could support an argument that the term requires a specific, web-like structure inserted into a cut, rather than simply the inner wall of a toroidal chamber.
The Term: "bonded to said inner cut edge or to said inner peripheral bond" (from Claim 8)
- Context and Importance: This limitation defines how the reinforcing "band of film" connects to the rest of the structure. The complaint's images and allegations suggest the accused product's structure aligns with this language. (Compl. pp. 20-21). However, the complaint also pleads equivalents for the bonding in other claims (Compl. p. 12), indicating that the precise nature of the connection is a potential point of dispute across the case. The construction of "bonded to" will clarify whether an intermediate piece of film is permissible for a literal read.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The language "bonded to said inner cut edge or to said inner peripheral bond" provides an alternative for the point of connection, which may support a more flexible interpretation of how the components must be joined.
- Evidence for a Narrower Interpretation: A party might argue that "bonded to" requires a direct seal between the recited components (the lower edge of the band and the inner cut edge/peripheral bond), and that an indirect connection would not satisfy the limitation literally.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement. Inducement is alleged based on Defendant selling the accused products to end users and distributors (including Amazon), thereby encouraging and facilitating their infringing use. (Compl. ¶¶45-48). Contributory infringement is alleged on the basis that the accused heaters are especially made for infringement and are not staple articles of commerce suitable for substantial non-infringing use. (Compl. ¶41).
- Willful Infringement: Willfulness is alleged based on both pre-suit and post-suit knowledge. The complaint asserts pre-suit knowledge by arguing the accused product is "so identical" to Plaintiff's patented and marked product that Defendant "knew or should have known" of the patent. (Compl. ¶43). This is supplemented by pointing to Defendant's marketing statements allegedly referencing Plaintiff's products. (Compl. ¶44). Post-suit willfulness is alleged based on continued infringement after Defendant was served with the original complaint on October 3, 2023. (Compl. ¶49).
VII. Analyst’s Conclusion: Key Questions for the Case
A central issue will be one of claim construction and structural interpretation: Does the accused product's three-piece construction (an upper film, a lower film, and a separate film strip forming the inner wall of the outer ring) literally meet the language of claims written to describe a structure made from a single upper and lower film, such as the "vertical band of film" in Claim 1 or the "band of film positioned in the cut" of Claim 8?
A key alternative question will be one of functional equivalence: If the accused product is found not to literally infringe, does its method of reinforcing the outer ring perform substantially the same function (resisting buckling) in substantially the same way (using a vertically-oriented film member to counteract radial forces) to achieve substantially the same result (a stable, flat-floating heater) as the claimed invention? The unamended status of the claims during prosecution may play a significant role in this analysis.