DCT
1:10-cv-00302
Metraflex Co The v. Flex Hose Co Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: The Metraflex Company (Illinois)
- Defendant: Flex-Hose Company, Inc. (New York)
- Plaintiff’s Counsel: Greer, Burns & Crain, LTD.
- Case Identification: 1:10-cv-00302, N.D. Ill., 08/23/2010
- Venue Allegations: Plaintiff alleges venue is proper because Defendant conducts business in the district through sales to a local distributor and makes its products available to users in the district via its website.
- Core Dispute: Plaintiff alleges that Defendant’s online product configuration software infringes a patent related to a method for displaying customizable products on a website.
- Technical Context: The technology concerns early e-commerce methods for efficiently generating and displaying images of complex, user-configurable products, such as industrial equipment with multiple selectable components.
- Key Procedural History: The complaint details extensive pre-suit correspondence between the parties, beginning in April 2009, concerning alleged copyright infringement and false advertising in Defendant's marketing brochures. The complaint also notes that Plaintiff previously filed two separate patent infringement suits against other competitors regarding a different patent, which terminated in settlements.
Case Timeline
| Date | Event |
|---|---|
| 2000-01-28 | Priority Date for U.S. Patent No. 6,727,928 |
| 2004-04-27 | U.S. Patent No. 6,727,928 Issued |
| 2009-04-09 | Metraflex sends cease and desist letter to Flex-Hose regarding marketing brochure |
| 2010-08-23 | First Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,727,928 - "Method of Displaying Product Selection on Web Site"
- Patent Identification: U.S. Patent No. 6,727,928, "Method of Displaying Product Selection on Web Site," issued April 27, 2004 (the “'928 Patent”).
The Invention Explained
- Problem Addressed: The patent addresses the challenge of displaying products with many configurable features on a website. Storing a separate, pre-rendered image for every possible combination of features could "quickly overwhelm a capacity for displaying the different combinations" and require excessive data storage. (’928 Patent, col. 3:20-35).
- The Patented Solution: The invention proposes a method where, instead of storing images of every final product, the system stores images of the "individual permutations" of each feature (e.g., images of different end-fittings, different hose materials). When a user makes selections, the system generates a "composite image" on the fly by assembling the chosen individual images. (’928 Patent, Abstract; col. 3:46-53). For a hose product with 40 left-end fittings, 40 right-end fittings, and 3 middle sections, this reduces the number of required stored images from 4,800 to 83. (’928 Patent, col. 4:36-42).
- Technical Importance: This method provided a data-efficient solution for early e-commerce platforms to offer complex, customizable products interactively without incurring prohibitive storage costs or slow performance. (’928 Patent, col. 3:46-53).
Key Claims at a Glance
- The complaint asserts infringement of independent claims 1, 2, 16, 19, and 20. (Compl. ¶¶ 56-84).
- Independent Claim 1: A method for displaying a product with various fittings via a global computer network, comprising the steps of:
- accessing a website and selecting a product
- selecting a fitting
- selecting a permutation of the fitting
- looping to select further fittings or proceeding
- generating a composite image from stored images of the individual permutations of the selected fittings
- displaying the composite image on the remote computer
- Independent Claim 2: A method for displaying a plumbing product via a global computer network, comprising the steps of:
- accessing a website and displaying a plumbing product with variable visual features (middle and end portions)
- selecting a permutation of at least one variable feature (other than color)
- generating a composite image from stored images of the individual permutations
- displaying the composite image on the remote computer
- displaying the product's specifications based on the selected permutations
- The complaint’s general allegation of infringement of "one or more of the claims" suggests it reserves the right to assert dependent claims. (Compl. ¶101).
III. The Accused Instrumentality
Product Identification
- The "XJS Sizing Software" and "Tri-Flex Loop Sizer Software," collectively referred to as the "Accused Software." (Compl. ¶54).
Functionality and Market Context
- The Accused Software is allegedly made available on the Defendant's website. (Compl. ¶55). The complaint alleges that the software provides a method for users to select a commercial plumbing product, choose from various features and fittings, and view a composite image of the configured product on their computer. (Compl. ¶¶ 56-61, 63-66). Defendant is alleged to be a direct competitor of the Plaintiff in the market for flexible expansion loops. (Compl. ¶17).
- No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
’928 Patent Infringement Allegations (Claim 1)
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| in step 1, accessing a web site from a computer remote from a host computer and selecting a commercial product from a plurality of products | A user accesses the Flex-Hose website from a remote computer and selects a commercial product. | ¶57 | col. 4:18-20 |
| in step 2, selecting a fitting of said selected product | The user selects a fitting for the chosen product. | ¶58 | col. 4:21 |
| in step 3, selecting a permutation of said fitting | The user selects a specific permutation of that fitting. | ¶59 | col. 4:22 |
| returning to step 2 if a further fitting is to be selected or proceeding to a step 4 if no further fittings are to be selected | The user either returns to select another fitting or proceeds if no further fittings are to be selected. | ¶59 | col. 4:23-25 |
| in step 4, generating a composite image of said selected product with said selected permutations ... from stored images of individual permutations of said fittings | A composite image of the selected product is generated using the selected permutations from stored images of individual permutations. | ¶60 | col. 4:26-29 |
| in step 5, displaying said composite image at said remote computer | The generated composite image is displayed on the user's remote computer. | ¶61 | col. 4:30-31 |
’928 Patent Infringement Allegations (Claim 2)
| Claim Element (from Independent Claim 2) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| in step 1, accessing a web site from a computer remote from a host computer and displaying at said remote computer a plumbing product with variable visual features including a middle portion and end portions... | A user accesses the website from a remote computer and displays a plumbing product having variable visual features. | ¶63 | col. 4:36-41 |
| in step 2, selecting a permutation of at least one of said variable features other than color | The user selects a permutation of at least one of the variable features. | ¶64 | col. 4:42-43 |
| in step 3, generating a composite image of said selected product with said selected permutation of said variable features from stored images of individual permutations of said features | A composite image is generated from stored images of the individual permutations of the selected features. | ¶65 | col. 4:44-47 |
| in step 4, displaying said composite image at said remote computer | The generated composite image is displayed on the user's remote computer. | ¶66 | col. 4:48-49 |
| in step 5, displaying at said remote computer the specifications of said selected product based upon said selected permutations | The specifications for the configured product are displayed on the user's remote computer. | ¶67 | col. 4:49-52 |
Identified Points of Contention
- Scope Questions: The complaint states that "the user of the Accused Software... performs the method" steps. (Compl. ¶¶ 56-78). Because all steps of a method claim must be performed by a single entity for direct infringement to occur, this raises the question of divided infringement. The complaint attempts to attribute the user's actions to the Defendant by pleading that the user acts "under the direction and control" of Flex-Hose, which will be a key legal battleground. (Compl. ¶56).
- Technical Questions: The allegation that the Accused Software "generat[es] a composite image ... from stored images of individual permutations" is made "on information and belief." (Compl. ¶¶ 60, 65). A central factual question will be what evidence supports this specific technical implementation, as opposed to alternative, potentially non-infringing methods of generating product images (e.g., using pre-composed images for popular configurations or dynamic 3D rendering).
V. Key Claim Terms for Construction
The Term: "generating a composite image ... from stored images of individual permutations"
Context and Importance: This phrase describes the core technical mechanism of the invention. The infringement analysis hinges on whether the Accused Software operates in this specific manner. Practitioners may focus on this term because it distinguishes the claimed method from simply storing and displaying a vast library of pre-made final images.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification does not narrowly define the format of the "individual feature images" or the precise software mechanism for combining them, which could support an argument that any system that assembles a final view from separate visual components infringes.
- Evidence for a Narrower Interpretation: The patent’s detailed example, which contrasts 4,800 possible combinations with only 83 required stored images (’928 Patent, col. 4:36-42), suggests a specific architecture of piecing together discrete, feature-level image files. A defendant may argue this language limits the claim to a literal "stitching" of image files and excludes other methods, such as layering or dynamic rendering.
The Term: "fitting" (Claim 1)
Context and Importance: The scope of this term defines the types of selectable product components covered by Claim 1.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent describes the product's features as a "left end, a right end and the middle," suggesting "fitting" could be broadly interpreted to mean any distinct, selectable part of the overall product assembly. (’928 Patent, col. 4:21-24).
- Evidence for a Narrower Interpretation: In the context of "metal hose products," a defendant could argue that "fitting" has a narrower, industry-specific meaning (e.g., a flange, coupling, or connector) and does not cover other variable attributes like hose material or length, which the patent discusses as separate types of "permutations." (’928 Patent, col. 4:45-48).
VI. Other Allegations
- Indirect Infringement: The prayer for relief seeks a judgment of induced and contributory infringement. (Compl. p. 23, ¶A). The factual basis alleged for inducement is that Defendant provides the Accused Software on its website, which inherently instructs and encourages users to perform the steps of the patented method to configure and view products. (Compl. ¶¶ 55-56).
- Willful Infringement: The complaint alleges that Defendant's infringement was willful and intentional. (Compl. ¶105). While the complaint does not allege pre-suit knowledge of the ’928 Patent specifically, it details extensive pre-suit correspondence regarding other intellectual property (copyright), which Plaintiff may argue put Defendant on notice of a need to exercise due care regarding Plaintiff's IP rights more broadly. (Compl. ¶¶ 30-49).
VII. Analyst’s Conclusion: Key Questions for the Case
- A primary legal question will be one of divided infringement: can Plaintiff establish that Defendant exercises sufficient "direction or control" over its website users to be held liable for direct infringement of the method claims, or must it rely on an indirect infringement theory, which requires proving specific intent?
- A key evidentiary question will be one of technical implementation: discovery will be needed to determine precisely how the Accused Software generates and displays product images. The case will likely turn on whether it uses a "composite image" generated from "stored images of individual permutations" as claimed, or an alternative, non-infringing technology.
- The outcome may also depend on claim construction: the court's interpretation of the phrase "generating a composite image" will be critical. A narrow construction may limit the patent's scope to a literal assembly of static image files, potentially excluding more modern or different rendering techniques from infringement.