DCT
1:24-cv-13079
Acorn Engineering Co Inc v. Amico Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Acorn Engineering Co., Inc. (California) and Wdmdb, LLC (Arizona)
- Defendant: Amico Corporation (Canada)
- Plaintiff’s Counsel: Honigman LLP; Spencer Fane LLP
- Case Identification: 1:24-cv-13079, N.D. Ill., 12/19/2024
- Venue Allegations: Venue is asserted on the basis that the defendant is a foreign corporation not residing in the United States.
- Core Dispute: Plaintiffs allege that Defendant’s dialysis service box systems infringe two patents related to integrated plumbing assemblies for medical dialysis machines.
- Technical Context: The technology involves consolidating the multiple plumbing components required for a dialysis machine—such as water supply, waste drainage, backflow prevention, and trap priming—into a single, compact, wall-mounted service box.
- Key Procedural History: The complaint alleges that Plaintiffs provided Defendant with notice of the patents-in-suit and its infringing activity on at least two occasions prior to filing suit, first on December 22, 2023, and again on June 14, 2024. These allegations form the basis for the claim of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2010-07-09 | Priority Date for '718 and '363 Patents |
| 2014-09-16 | '718 Patent Issue Date |
| 2017-11-28 | '363 Patent Issue Date |
| 2023-12-22 | First alleged notice of infringement to Defendant |
| 2024-06-14 | Second alleged notice of infringement to Defendant |
| 2024-12-19 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,834,718 - "Dialysis Service Box" (Issued Sep. 16, 2014)
The Invention Explained
- Problem Addressed: The patent describes prior art dialysis service systems as requiring multiple, separately located components, such as a basic service box, a remote backflow preventer, and a remote trap primer, connected by extensive plumbing. This configuration is described as increasing installation cost and complexity, requiring more wall space, and increasing the response time for medical personnel in an emergency (Compl. ¶14; ’718 Patent, col. 1:46-59).
- The Patented Solution: The invention is a single, self-contained dialysis service box that integrates all necessary plumbing components—including a supply inlet, waste outlet, backflow preventer, and trap primer—within a single recessed casing. This consolidation aims to create a centralized and compact connection point for a dialysis machine (’718 Patent, col. 2:1-14, Abstract). The detailed description explains that this configuration provides convenient access for connecting a dialysis machine while housing the various components that manage water supply and waste disposal (’718 Patent, col. 3:33-57).
- Technical Importance: The integrated design sought to reduce the cost, labor, and time required for installation and operation compared to systems with remote components (Compl. ¶15; ’718 Patent, col. 1:50-59).
Key Claims at a Glance
- The complaint asserts infringement of at least independent claim 1 (Compl. ¶24).
- Claim 1 of the ’718 Patent recites a dialysis service box comprising:
- A casing defining an enclosure.
- A supply inlet attached to the casing for receiving fluid.
- A waste outlet attached to the casing for connecting to a waste disposal.
- A "dialysis supply and waste management system" disposed within the enclosure, which itself comprises:
- A plumbing arrangement with a connection port to provide fluid to a dialysis machine.
- A backflow preventer to prevent retrograde fluid flow.
- A trap primer in fluid communication with the plumbing arrangement.
U.S. Patent No. 9,827,363 - "Dialysis Service Box" (Issued Nov. 28, 2017)
The Invention Explained
- Problem Addressed: As a continuation-in-part of the application leading to the ’718 Patent, the ’363 Patent addresses the same technical problem of decentralized and inefficient plumbing for prior art dialysis machines (’363 Patent, col. 1:47-62).
- The Patented Solution: The solution is also an integrated dialysis service box containing the core plumbing components. The claims of the ’363 Patent add further specificity to the system's elements. The specification describes a connection port that may include an adapter, such as a male adapter, to facilitate connection to the dialysis machine (’363 Patent, col. 4:63-65).
- Technical Importance: The invention provides a refined version of the integrated dialysis box, with claims directed to specific configurations of the connection port and trap primer functionality.
Key Claims at a Glance
- The complaint asserts infringement of at least independent claim 1 (Compl. ¶39).
- Claim 1 of the ’363 Patent recites a dialysis service box that includes the core elements of the ’718 Patent's claim 1 and adds limitations including:
- A trap primer "configured for delivering priming fluid to the waste outlet by gravity flow."
- The box further comprises "a first adapter associated with the connection port, the first adapter configured to supply fluid to the dialysis machine."
III. The Accused Instrumentality
Product Identification
- The complaint identifies the accused instrumentality as a "dialysis box" sold by Amico, referred to as the "Accused Product" (Compl. ¶17).
Functionality and Market Context
- The complaint alleges the Accused Product is a dialysis box system that includes a casing that encloses a thermostatic mixing valve, a reduced pressure backflow preventer, and a trap primer (Compl. ¶18). This design allegedly "eliminates the need for installation in a remote location" (Compl. ¶18).
- The complaint asserts that Amico is a supplier of medical products in the United States and that it makes, uses, sells, or imports the Accused Product (Compl. ¶4).
- Figure 2 of the complaint provides an annotated internal view of the Accused Product, identifying key components alleged to meet claim limitations (Compl. p. 5, Fig. 2).
IV. Analysis of Infringement Allegations
’718 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a casing having a top side portion, a bottom side portion, a rear side portion, a left side portion and a right side portion that collectively define an enclosure | The Accused Product includes a multi-sided casing that defines an enclosure, as depicted in external and internal views. | ¶25, ¶26 | col. 6:23-26 |
| a supply inlet (2) attached to the casing, the supply inlet being in communication with a source of fluid | The Accused Product has a supply inlet, identified as element (2) in an annotated photograph, for connection to a fluid source. | ¶27 | col. 6:27-29 |
| a waste outlet (3) attached to the casing, the waste outlet being in fluid flow communication with a waste disposal | The Accused Product has a waste outlet, identified as element (3) in an annotated photograph, for communication with waste disposal. | ¶28 | col. 6:30-32 |
| a dialysis supply and waste management system...disposed within the enclosure of the casing | The internal components of the Accused Product, identified as elements (2, 3, 4, 5, and 6), are alleged to form this system and are located within the casing. | ¶29 | col. 6:33-36 |
| a plumbing arrangement in fluid flow communication with the supply inlet...and a connection port (4)...configured to provide fluid to a dialysis machine | The system contains a plumbing arrangement connected to the supply inlet and a connection port, identified as element (4), to provide fluid to a dialysis machine. | ¶30 | col. 6:37-42 |
| a backflow preventer (5) in fluid flow communication with the plumbing arrangement for preventing retrograde flow | The system contains a backflow preventer, identified as element (5), to prevent retrograde fluid flow. | ¶31 | col. 6:43-46 |
| a trap primer (6) in fluid flow communication with the plumbing arrangement | The system contains a trap primer, identified as element (6), in fluid communication with the plumbing arrangement. | ¶32 | col. 6:47-49 |
’363 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a casing...that collectively define an enclosure | The Accused Product includes a multi-sided casing defining an enclosure. | ¶40, ¶41 | col. 8:41-43 |
| a supply inlet (2) configured to communicate with a source of fluid | The Accused Product has a supply inlet, identified as element (2), configured to communicate with a fluid source. | ¶42 | col. 8:44-45 |
| a waste outlet (3) configured to communicate with a waste disposal | The Accused Product has a waste outlet, identified as element (3), configured to communicate with waste disposal. | ¶43 | col. 8:46-47 |
| a dialysis supply and waste management system...disposed within the enclosure of the casing | The internal components of the Accused Product are alleged to form this system within the casing. | ¶44 | col. 8:48-51 |
| a plumbing system...in fluid flow communication with the supply inlet (2) | The system contains plumbing, including copper tubing, in communication with the supply inlet. | ¶45 | col. 8:52-53 |
| a connection port (4) configured to provide fluid to a dialysis machine | The system contains a connection port, identified as element (4), to provide fluid to a dialysis machine. | ¶46 | col. 8:54-55 |
| a backflow preventer (5)...configured to prevent retrograde fluid flow | The system contains a backflow preventer, identified as element (5), to prevent retrograde fluid flow. | ¶47 | col. 8:56-59 |
| a trap primer (6)...configured for delivering priming fluid to the waste outlet (3) by gravity flow | The system contains a trap primer, identified as element (6), which is alleged to be configured to deliver priming fluid to the waste outlet via gravity flow. | ¶48 | col. 8:60-63 |
| a first adapter associated with the connection port (4), the first adapter configured to supply fluid to the dialysis machine | The Accused Product is alleged to include a first adapter associated with the connection port for supplying fluid to a dialysis machine. | ¶49 | col. 8:64-67 |
- Identified Points of Contention:
- Technical Questions: While the complaint identifies components by name (e.g., "trap primer"), a central question will be one of functional operation. For the ’363 Patent, it must be proven that the accused trap primer is "configured for delivering priming fluid to the waste outlet by gravity flow" (Compl. ¶48). This requires evidence of the product's specific operational characteristics, not just the presence of a component with that name.
- Scope Questions: For the ’363 Patent, the infringement analysis will depend on the interpretation of "a first adapter associated with the connection port" (Compl. ¶49). The dispute may focus on whether the accused hardware constitutes an "adapter" that is distinct from the "connection port" itself, or if they are a single, integrated component. The resolution of this question may depend on claim construction.
V. Key Claim Terms for Construction
The Term: "a first adapter associated with the connection port" (’363 Patent, Claim 1)
Context and Importance: This term is a key limitation added in the ’363 Patent and distinguishes its asserted claim from that of the earlier ’718 Patent. The infringement analysis for the ’363 Patent hinges on whether the accused product possesses this specific element. Practitioners may focus on this term because it appears to require a structure beyond just the "connection port," and its construction could be case-dispositive for this patent.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language "associated with" could be argued to encompass a wide range of physical and functional relationships, suggesting the adapter need not be a completely separate or distinct component from the port.
- Evidence for a Narrower Interpretation: The specification explicitly provides an example: "the connection port 111 may include an adapter 121, for example, a male adapter" (’363 Patent, col. 4:63-65). A defendant may argue this language, combined with the use of two distinct terms ("adapter" and "port") in the claim, requires two identifiably separate structures, limiting the claim scope to systems where the adapter is a distinct fitting attached to the port.
The Term: "dialysis supply and waste management system" (’718 and ’363 Patents, Claim 1)
Context and Importance: This term defines the collection of components housed within the casing. Its construction is important for defining the required relationship between the claimed plumbing elements (plumbing arrangement, backflow preventer, trap primer). The question is whether these components must be integrated in a particular way to form a "system."
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue that any collection of the recited components disposed within the enclosure meets the definition of the "system," regardless of their specific physical integration, as long as they are in fluid communication as claimed.
- Evidence for a Narrower Interpretation: The patent's objective is to solve the problem of "remote and separate locations" for components (’718 Patent, col. 1:39-42). This purpose could support a narrower construction requiring the components to be part of a compact, pre-assembled, and unified chassis or manifold, rather than merely being co-located within a box.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Amico induced infringement by its customers, asserting that Amico acted with "specific intent" and knew its customers would be practicing the claims by using the Accused Product (Compl. ¶34, ¶51). The complaint does not specify the evidence for this, such as user manuals or installation instructions.
- Willful Infringement: The complaint alleges willful infringement based on Amico’s alleged pre-suit knowledge of the patents. It specifically pleads that Amico received notice of the patents and its infringement on December 22, 2023, and again on June 14, 2024, but continued its infringing activities "in willful disregard of the rights created" by the patents (Compl. ¶19, ¶20, ¶35, ¶52).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of claim construction and definitional scope, particularly for the ’363 Patent. The outcome may depend on whether the accused product’s connection hardware can be proven to meet the "first adapter associated with the connection port" limitation, a question that turns on the legal interpretation of that term.
- A key evidentiary question will be one of technical function versus component identity. While the complaint uses annotated photographs to identify components that share names with claim elements, the case will require factual proof that these components operate in the specific manner required by the claims, such as the trap primer’s alleged use of "gravity flow" in the ’363 Patent.
- The dispute over willful infringement will likely be a significant focus. The allegation is supported by specific dates of alleged notice, shifting the inquiry to what actions, if any, the Defendant took in response to those notices, such as investigating the patents or seeking an opinion of counsel.