DCT
1:18-cv-07165
ITW Global Tire Repair Inc v. Hopkins Mfg Corporaton
I. Executive Summary and Procedural Information
- Case Name: ITW Global Tire Repair Inc. v. Hopkins Manufacturing Corporation
- Parties & Counsel:
- Plaintiff: ITW Global Tire Repair Inc. (California)
- Defendant: Hopkins Mfg Corp (Kansas)
- Plaintiff’s Counsel: Husch Blackwell LLP
- Case Identification: 1:18-cv-07165, N.D. Ill., 10/26/2018
- Venue Allegations: Plaintiff alleges venue is proper because Defendant is registered to do business in Illinois, has a regular and established place of business in the district, and committed acts of infringement by selling the accused product in the district.
- Core Dispute: Plaintiff alleges that Defendant’s tire sealant product infringes a patent related to puncture sealing agent compositions that use glycerin as an anti-freezing agent.
- Technical Context: The technology concerns the chemical formulation of tire puncture sealants, designed to improve long-term shelf stability and prevent the product from clogging its container.
- Key Procedural History: While not mentioned in the complaint, a subsequently issued Inter Partes Review (IPR) Certificate for the patent-in-suit indicates that the primary asserted claim, Claim 1, was cancelled. This IPR (IPR2019-01202) was initiated after the complaint was filed and its outcome fundamentally impacts the viability of the infringement allegations as pleaded.
Case Timeline
| Date | Event |
|---|---|
| 2006-03-24 | '041 Patent Priority Date (Filing Date) |
| 2008-06-17 | '041 Patent Issue Date |
| 2018-10-26 | Complaint Filing Date |
| 2019-06-14 | IPR2019-01202 Filed Against '041 Patent |
| 2021-06-29 | IPR Certificate Issued, Cancelling Claim 1 |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,388,041 - "Puncture Sealing Agent for a Tire, and Process for Producing the Same"
The Invention Explained
- Problem Addressed: The patent’s background section states that prior art puncture sealing agents, which typically used ethylene or propylene glycol, suffered from a problem during long-term storage. The rubber and adhesive particles, being less dense than the glycol solution, would "aggregate near the surface," forming a "creamy material" that clogs the container outlet and hinders the sealant's application ('041 Patent, col. 1:25-45).
- The Patented Solution: The invention proposes using glycerin as the anti-freezing agent instead of traditional glycols ('041 Patent, col. 1:51-54). The patent explains that glycerin has a higher density, which helps "stabilize the rubber particles from rising easily" and suppresses the formation of the "particle-concentrated layer near the surface" ('041 Patent, col. 1:55-59). This substitution is intended to improve the "long-term shelf life stability" of the sealant without compromising its anti-freezing properties ('041 Patent, col. 1:10-12).
- Technical Importance: The claimed invention sought to provide a tire sealant formulation with enhanced storability and reliability compared to existing products on the market ('041 Patent, col. 1:45-49).
Key Claims at a Glance
- The complaint asserts infringement of "at least claim 1" ('041 Patent, col. 9:54-61; Compl. ¶19).
- Independent Claim 1 requires:
- A puncture sealing agent, comprising:
- a rubber latex comprising one of a natural rubber and a synthetic rubber
- mixed with a glycerin anti-freezing agent
- wherein a ratio of the glycerin anti-freezing agent to the total weight of the puncture sealing agent composition is between 5 and 75% by weight.
- The complaint generally alleges infringement of "one or more claims," which may be construed as a reservation of rights to assert other claims ('041 Patent, Compl. ¶1, ¶26).
III. The Accused Instrumentality
Product Identification
The accused product is identified as the "VALVE THRU ATV/OFF-ROAD TIRE SEALANT" (Compl. ¶2).
Functionality and Market Context
The complaint describes the Accused Product as a "puncture sealing agent" that is sold and used as a "tire repair solution" (Compl. ¶18). It is alleged to contain the same core components recited in the asserted patent claim: a "rubber latex comprising a natural and synthetic rubber mixed with an anti-freezing agent that includes glycerin," with the glycerin ratio falling within the claimed range (Compl. ¶18). The complaint further alleges that Hopkins "emulated and copied features" of Plaintiff's own commercial products and intended to "aggressively promote and offer for sale" the Accused Product at a major industry trade show (Compl. ¶23, ¶25).
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
Claim Chart Summary
The complaint’s infringement theory for Claim 1 is based on conclusory allegations that directly track the claim language.
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A puncture sealing agent, comprising: a rubber latex comprising one of a natural rubber and a synthetic rubber... | The Accused Product is a puncture sealing agent which "contains rubber latex comprising a natural and synthetic rubber". | ¶18 | col. 3:37-44 |
| ...mixed with a glycerin anti-freezing agent... | The Accused Product is "mixed with an anti-freezing agent that includes glycerin". | ¶18 | col. 1:51-54 |
| ...wherein a ratio of the glycerin anti-freezing agent to the total weight of the puncture sealing agent composition is between 5 and 75% by weight. | The Accused Product contains glycerin "in a ratio to the total weight of the puncture sealing agent of between 5 and 75% by weight". | ¶18 | col. 4:46-49 |
Identified Points of Contention
- Scope Questions: A central question is whether the term "glycerin anti-freezing agent" requires glycerin to be the sole or primary anti-freezing component, or if it can be read to cover any formulation that simply "includes glycerin" as an anti-freezing component among others (Compl. ¶18).
- Technical Questions: A key evidentiary question, now moot given the claim's cancellation, would have been whether testing of the Accused Product confirms its composition. The complaint's allegations regarding the precise weight ratio of glycerin are made "upon information and belief" and would require factual discovery to substantiate (Compl. ¶18).
V. Key Claim Terms for Construction
- The Term: "glycerin anti-freezing agent"
- Context and Importance: This term is the central point of novelty. Its construction determines whether the claim is limited to formulations where glycerin is the exclusive anti-freezing agent or if it can cover mixtures. This is critical because the complaint alleges the accused product's anti-freezing agent "includes glycerin," leaving open the possibility that other agents are present (Compl. ¶18).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The plain language of Claim 1 recites "a glycerin anti-freezing agent," which could be interpreted to mean an agent characterized by the presence of glycerin, not necessarily its exclusive presence.
- Evidence for a Narrower Interpretation: The patent specification consistently frames the invention as using glycerin instead of prior art glycols to solve the density and aggregation problem ('041 Patent, col. 1:51-54). Other parts of the specification, however, explicitly contemplate mixtures, such as a "glycerin and potassium acetate mixture" ('041 Patent, col. 4:15-18). A defendant could argue these disclosed mixtures inform the scope of claims that do not explicitly recite such mixtures, potentially limiting "glycerin anti-freezing agent" to glycerin-only compositions where not otherwise specified.
VI. Other Allegations
- Indirect Infringement: The complaint alleges active inducement under 35 U.S.C. §271(b) (Compl. ¶20). The factual basis alleged is that Hopkins, through its "marketing, promotion and sales," encourages distributors, retailers, and end-users to use the Accused Product in an infringing manner (Compl. ¶22, ¶24).
- Willful Infringement: Willfulness is alleged based on Hopkins having "actual or constructive knowledge" of the '041 patent (Compl. ¶22). The complaint asserts that Hopkins had actual knowledge due to Plaintiff’s patent marking practices, or was "willfully blind" to the patent (Compl. ¶21). The allegation that Hopkins "emulated and copied" features of Plaintiff's products is also offered in support of intentional infringement (Compl. ¶23).
VII. Analyst’s Conclusion: Key Questions for the Case
- A dispositive issue is one of procedural viability: given that the sole independent claim identified in the complaint (Claim 1) was cancelled in a post-filing IPR proceeding, the foundational basis for the lawsuit as pleaded appears to have been eliminated. The central question is how the court will proceed in light of this development.
- A secondary question, now largely academic, is one of compositional scope: would the term "glycerin anti-freezing agent" be construed to read on a product where glycerin is merely one component of the anti-freezing formulation, or does the patent require glycerin to be the sole or defining anti-freezing ingredient?
- An evidentiary question would have been one of factual proof: the complaint’s allegations regarding the specific chemical composition and weight percentages of the accused product are made on information and belief. The case would have depended on whether discovery and expert analysis could substantiate these factual claims.