DCT

1:24-cv-00589

Omnitek Partners LLC v. Toto USA Inc

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:24-cv-00589, N.D. Ga., 02/08/2024
  • Venue Allegations: Plaintiff alleges venue is proper because Defendant maintains established and regular places of business within the Northern District of Georgia.
  • Core Dispute: Plaintiff alleges that Defendant’s thermostatic valve products infringe a patent related to temperature-sensitive safety valves that use shape memory actuators to prevent scalding.
  • Technical Context: The technology involves safety valves for consumer plumbing fixtures and containers, designed to automatically shut off the flow of liquid when its temperature exceeds a safe, predetermined threshold.
  • Key Procedural History: The patent-in-suit expired on April 23, 2023. The complaint seeks damages for past infringement within the statutory six-year period. The complaint notes that during prosecution, the USPTO examiner considered prior art reference U.S. Patent No. 5,584,432 before allowing the claims.

Case Timeline

Date Event
2002-01-08 '889 Patent Priority Date
2014-04-15 '889 Patent Issue Date
2023-04-23 '889 Patent Expiration Date
2024-02-08 Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 8,695,889 - *Temperature Sensitive Valve Having Shape Memory Actuator*

  • Patent Identification: U.S. Patent No. 8,695,889, Temperature Sensitive Valve Having Shape Memory Actuator, issued April 15, 2014.

The Invention Explained

  • Problem Addressed: The patent describes the danger of people, particularly children, being burned by excessively hot liquids dispensed from containers like coffee cups and baby bottles, or from plumbing fixtures like sinks and showers. It notes that prior art safety devices were often "complicated and expensive" (ʼ889 Patent, col. 1:22-42).
  • The Patented Solution: The invention is a valve that incorporates a "shape memory actuator," a component made from a material (such as a nickel-titanium alloy) that changes shape at a specific temperature. Below a predetermined temperature, the actuator maintains a shape that allows fluid to flow through an opening in the valve. When the fluid's temperature rises above this threshold, the actuator transforms to a different, pre-set shape that blocks the opening, thereby preventing the dangerously hot fluid from being dispensed (ʼ889 Patent, Abstract; col. 2:58-65).
  • Technical Importance: The invention proposes a simple, inexpensive, and automatic safety mechanism to prevent scalding injuries from common household products (ʼ89 Patent, col. 1:44-54).

Key Claims at a Glance

  • The complaint asserts independent Claim 1 (Compl. ¶24).
  • Claim 1 Elements:
    • a body having at least one opening for allowing the fluid to pass when the temperature of the fluid is below the predetermined threshold; and
    • a shape memory actuator for substantially closing the at least one opening when the temperature of the fluid is above the predetermined threshold to prevent the fluid from passing;
    • wherein the valve is configured such that a flow of the fluid through the body acts to close the shape memory actuator against the at least one opening.
  • The complaint notes the patent contains ten dependent claims but does not specify which, if any, are asserted at this time (Compl. ¶11).

III. The Accused Instrumentality

Product Identification

The complaint identifies the accused instrumentalities as products incorporating "the Safety Thermo® with SMA Thermostatic Valve Technology" (Compl. ¶24).

Functionality and Market Context

The complaint does not provide specific details on the operation of the accused products. It alleges that the products "practice the technology claimed" by the '889 Patent and incorporates by reference an attached claim chart (Exhibit B) that purportedly demonstrates how the products meet all elements of Claim 1 (Compl. ¶27-28). The complaint does not contain allegations regarding the products' specific commercial importance or market position.

IV. Analysis of Infringement Allegations

The complaint references a claim-chart exhibit (Exhibit B) to support its infringement allegations, but this exhibit was not filed with the public complaint (Compl. ¶24, ¶27). The infringement theory is therefore based on the narrative allegations. The complaint alleges that Defendant's "Safety Thermo® with SMA Thermostatic Valve Technology" products directly infringe at least Claim 1 of the '889 Patent, either literally or under the doctrine of equivalents (Compl. ¶24-25). The complaint asserts that the attached (but unavailable) chart demonstrates that the "exemplary Products satisfy all elements of the exemplary claim 1" (Compl. ¶27).

No probative visual evidence provided in complaint.

  • Identified Points of Contention:
    • Technical Questions: A central factual question will be whether the accused "Safety Thermo®" products employ a "shape memory actuator" that functions as described in the patent. Evidence will be needed to show that a component in the accused products changes its physical shape in response to a predetermined temperature to block fluid flow.
    • Scope Questions: The final "wherein" clause of Claim 1 requires that the valve be "configured such that a flow of the fluid through the body acts to close the shape memory actuator against the at least one opening." A key dispute may arise over whether this requires the fluid flow to be an active and necessary force in the sealing process, or if it is met by a design where fluid pressure merely assists or does not oppose a closure driven entirely by the actuator itself. The infringement analysis will have to address the specific configuration of the accused valve.

V. Key Claim Terms for Construction

  • The Term: "shape memory actuator"

    • Context and Importance: This term is the technological core of the asserted claim. The case's outcome may depend on whether the mechanism within the accused TOTO product is properly characterized as a "shape memory actuator" under the patent's definition.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification suggests the term is not limited to a single material type, stating that one "can alternatively use a bi-metal actuator which changes shape due to a difference in thermal expansion" ('889 Patent, col. 7:1-3). This may support an interpretation covering any actuator that physically transforms based on temperature.
      • Evidence for a Narrower Interpretation: The detailed description repeatedly references specific metallic alloys like NiTi, CuZnAl, and CuAlNi that undergo a martensite-to-austenite crystal structure transformation ('889 Patent, col. 7:32-40). A party could argue the term should be limited to materials exhibiting this specific metallurgical property, as distinguished from a simpler bimetallic strip.

  • The Term: "configured such that a flow of the fluid through the body acts to close the shape memory actuator"

    • Context and Importance: This functional limitation in the "wherein" clause is a critical potential point of distinction. Infringement requires not just the presence of the actuator, but also this specific valve configuration.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification describes a preferred embodiment where the valve is "positioned with the actuator 406 on the pressurized side of the fluid flow such that the fluid flow tends to aid in closing the actuator" ('889 Patent, col. 12:1-4). The phrase "tends to aid" may support a broader reading where any non-adverse interaction with fluid pressure satisfies the limitation.
      • Evidence for a Narrower Interpretation: The claim language states the flow "acts to close" the actuator, which suggests a more direct, causal role for the fluid pressure in the sealing action. A party could argue that if the actuator's own restorative force is sufficient to close the valve regardless of fluid flow, this limitation is not met.

VI. Other Allegations

  • Indirect Infringement: The complaint includes a general allegation of inducement and contributory infringement but does not plead specific supporting facts, such as references to user manuals, marketing materials, or other instructions provided by the Defendant (Compl. ¶24).
  • Willful Infringement: The complaint alleges knowledge of infringement based on the service of the complaint itself (Compl. ¶22, ¶26). This allegation appears to support a claim for post-filing willfulness only, as no facts supporting pre-suit knowledge are alleged.

VII. Analyst’s Conclusion: Key Questions for the Case

  • A key evidentiary question will be one of technical operation: Do the accused "Safety Thermo®" products contain a component that qualifies as a "shape memory actuator" under the patent's definition, and does it demonstrably change shape at a set temperature to block flow?
  • A central dispute will likely be one of claim scope and function: Does the accused valve possess the specific configuration required by Claim 1's final clause, where fluid flow "acts to close" the actuator? The interpretation of this functional language, and whether the accused product's design meets it, will be critical.
  • Given that the patent has expired, the case is necessarily focused on retrospective damages. A core issue will be determining the scope of past infringement and calculating a reasonable royalty for sales of the accused products that occurred prior to the patent's expiration on April 23, 2023.