DCT
2:18-cv-02681
No Spill LLC v. Scepter Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: No Spill Inc. (Kansas)
- Defendant: Scepter Corporation, n/k/a 1216037 Ontario, Inc. (Canada); Scepter Canada, Inc. (Canada); Scepter Manufacturing LLC (Delaware)
- Plaintiff’s Counsel: Stinson LLP
- Case Identification: 2:18-cv-02681, D. Kan., 07/11/2019
- Venue Allegations: Venue is alleged to be proper based on the occurrence of a substantial part of the events giving rise to the claims within the district and on personal jurisdiction over the defendants. The complaint also asserts jurisdiction over the foreign defendants under F.R.C.P. 4(k)(2) and notes that Scepter Manufacturing consented to jurisdiction in Kansas via a supply agreement.
- Core Dispute: Plaintiff alleges that Defendants’ portable fuel containers, which employ a safety device known as a flash suppressor, infringe two patents related to explosion-inhibiting technology for such containers.
- Technical Context: The technology concerns safety features for portable plastic fuel containers, specifically internal devices designed to prevent flashback explosions by manipulating the fuel-air mixture near the container's opening to be too fuel-rich for combustion.
- Key Procedural History: The litigation arises from a soured business relationship between Plaintiff No Spill and Defendant Scepter Manufacturing, which previously manufactured fuel container components for No Spill under a Supply Agreement. The complaint details extensive interrelationships and alleged control between the U.S. and Canadian Scepter defendants and references a California Air Resources Board (CARB) order certifying Defendants' products.
Case Timeline
| Date | Event |
|---|---|
| 2012-05-30 | Earliest Priority Date for ’075 and ’132 Patents |
| 2013-09-06 | No Spill and Scepter Mfg. enter Supply Agreement |
| 2015-11-03 | ’075 Patent Issued |
| 2016-02-09 | First Amendment to Supply Agreement |
| 2017-08-22 | Scepter provides notice to terminate Supply Agreement |
| 2018-05-21 | No Spill sends Option Notice to purchase equipment |
| 2018-07-24 | ’132 Patent Issued |
| 2018-08-30 | California Air Resources Board issues order for Accused Products |
| 2019-07-11 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,174,075 - "Explosion Inhibiting Portable Fuel Container and Method of Inhibiting Explosions," issued November 3, 2015
The Invention Explained
- Problem Addressed: The patent describes the significant danger posed when users improperly pour fuel from a portable container onto an open flame or other ignition source, which can lead to a flashback explosion within the container. It notes that prior art flame arrestors, particularly metal screens, are ill-suited for common plastic fuel containers as they can cause fuel splash-back during filling and may even create a static spark. (’075 Patent, col. 1:35-51; col. 2:5-15).
- The Patented Solution: The invention proposes a counter-intuitive solution: a "fuel retention structure" inside the container's neck that is designed to intentionally trap a small amount of liquid fuel when the container is tipped for pouring. This trapped fuel creates a localized fuel-air mixture that is "too rich to support combustion," effectively creating a safety barrier that inhibits or suppresses an explosion if an external flame enters the opening. (’075 Patent, Abstract; col. 2:48-61). The specification illustrates this concept with embodiments like an annular "neck dam" or a perforated flash suppressor. (’075 Patent, Fig. 3, Fig. 7).
- Technical Importance: The invention's approach represents a paradigm shift from simply trying to block a flame to actively engineering a non-combustible chemical environment at the container's most vulnerable point. (’075 Patent, col. 2:30-41).
Key Claims at a Glance
- The complaint asserts "multiple claims" and specifically recites Independent Claim 1 (Compl. ¶¶24, 247).
- Independent Claim 1 Essential Elements:
- A fuel container comprising: a hollow tank body, a fuel dispensing assembly, and
- a fuel retention structure located proximate the main container opening and extending generally downwardly into the fuel-receiving chamber,
- wherein the fuel retention structure comprises a plurality of perforations through which the liquid fuel must flow in order to dispense the liquid fuel from the container,
- wherein the fuel retention structure is configured to retain a quantity of the liquid fuel in the chamber when the container is tipped or inverted to dispense the liquid fuel therefrom,
- wherein the retained quantity of the liquid fuel is sufficient to provide a fuel-air mixture proximate to the main container opening that is too rich to support combustion.
- The complaint does not explicitly reserve the right to assert dependent claims but alleges infringement of "multiple claims" (Compl. ¶247).
U.S. Patent No. 10,029,132 - "Explosion Inhibiting Portable Fuel Container and Method of Inhibiting Explosions," issued July 24, 2018
The Invention Explained
- Problem Addressed: As a continuation of the application leading to the ’075 patent, the ’132 patent addresses the same technical problem of preventing flashback explosions in portable fuel containers during misuse. (’132 Patent, col. 1:35-51).
- The Patented Solution: The ’132 patent claims a more specific implementation of the inventive concept, focusing on a "flash suppressor" made of synthetic resin with specifically defined physical and performance characteristics. The claimed solution requires the flash suppressor to have a minimum downward extension, a minimum internal volume, a defined range of "percent open," a specific range for the size and number of perforations, and a minimum average length for the perforations, all contributing to the function of inhibiting explosions. (’132 Patent, Abstract; Claim 1). The detailed description shows a cylindrical, perforated device designed to be integrated into the neck of a plastic fuel can. (’132 Patent, Fig. 7, Fig. 12).
- Technical Importance: This patent provides a detailed, engineered blueprint for a plastic-compatible device that implements the "too rich to burn" safety principle, defined by a series of quantitative parameters. (’132 Patent, col. 2:57-65).
Key Claims at a Glance
- The complaint asserts "multiple claims" and specifically recites Independent Claim 1 (Compl. ¶¶26, 257).
- Independent Claim 1 Essential Elements:
- A fuel container comprising: a hollow tank body, a fuel dispensing assembly, and
- a flash suppressor located proximate the main container opening and extending at least 2 inches downwardly into the fuel-receiving chamber,
- wherein the flash suppressor comprises a plurality of perforations through which the liquid fuel is required to flow in order to dispense the liquid fuel,
- wherein the flash suppressor is formed of synthetic resin material,
- wherein the flash suppressor has an internal volume of at least 2 cubic inches,
- wherein the flash suppressor is at least 10 percent open, and not more than 80 percent open,
- wherein the average open area of the perforations is at least 0.001 and not more than 0.05 square inches,
- wherein the total number of perforations is at least 100 and not more than 10,000, and
- wherein the average length of the perforations is at least 0.02 inches.
- The complaint does not explicitly reserve the right to assert dependent claims but alleges infringement of "multiple claims" (Compl. ¶257).
III. The Accused Instrumentality
- Product Identification: The accused products are identified as the "Infringing Fuel Containers," which are plastic gasoline containers manufactured and sold by Defendants that employ a flash suppressor (Compl. ¶121). These containers are marketed under brand names including "SmartControl" and "Ameri-Can" (Compl. ¶122).
- Functionality and Market Context: The complaint alleges the accused containers are manufactured by Scepter Manufacturing in Miami, Oklahoma, and sold through major U.S. retailers such as Walmart, Home Depot, and Lowe's (Compl. ¶¶83, 124). The key accused feature is a white, cylindrical "flash suppressor" made of resin that is positioned inside the container's opening (Compl. ¶¶121, 137, 140). The complaint provides a photograph of a red fuel container with its white, cylindrical flash suppressor partially removed to show its location inside the container's opening (Compl. ¶137). A close-up photograph of the accused flash suppressor shows its cylindrical, perforated structure (Compl. ¶140). The complaint alleges that this component has a specific internal volume, perforation count, and other physical attributes that map directly to the claims of the ’132 patent (Compl. ¶¶141-142).
IV. Analysis of Infringement Allegations
- ’075 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a hollow tank body defining a fuel-receiving chamber and a main container opening for permitting flow of a liquid fuel into and out of the fuel-receiving chamber; | The accused products are plastic gasoline containers with a main body for holding fuel and an opening for filling and dispensing. | ¶121, 137 | col. 4:11-16 |
| a fuel dispensing assembly coupled to the tank body proximate the main container opening and configured to dispense the liquid fuel from the container; | The accused products are sold with a "SmartControl" or "Ameri-Can" style nozzle assembly that threads onto the container's opening. | ¶122, 137 | col. 4:17-23 |
| a fuel retention structure located proximate the main container opening and extending generally downwardly into the fuel-receiving chamber, | The accused products contain a "flash suppressor" positioned within the opening of the container. | ¶121, 137 | col. 4:32-40 |
| wherein the fuel retention structure comprises a plurality of perforations through which the liquid fuel must flow in order to dispense the liquid fuel from the container, | The accused flash suppressor is constructed with a "plurality of perforations through which the liquid fuel must flow." | ¶140, 144 | col. 5:40-44 |
| wherein the fuel retention structure is configured to retain a quantity of the liquid fuel in the chamber when the container is tipped or inverted to dispense the liquid fuel therefrom, | The complaint alleges the accused flash suppressor "retains a quantity of the liquid fuel in the Infringing Fuel Container when the Infringing Fuel Container is tipped or inverted." | ¶145 | col. 4:54-58 |
| wherein the retained quantity of the liquid fuel is sufficient to provide a fuel-air mixture proximate to the main container opening that is too rich to support combustion. | The complaint alleges the "retained quantity of fuel is sufficient to provide a fuel-air mixture proximate to the main opening... that is too rich to support combustion." | ¶146 | col. 4:59-63 |
- ’132 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a flash suppressor located proximate the main container opening and extending at least 2 inches downwardly into the fuel-receiving chamber, | The complaint alleges the accused products infringe this claim, which requires a flash suppressor extending at least 2 inches downwardly. | ¶26, 257 | col. 7:46-51 |
| wherein the flash suppressor comprises a plurality of perforations through which the liquid fuel must flow in order to dispense the liquid fuel from the container, | The accused flash suppressor is alleged to be constructed with a "plurality of perforations." | ¶140 | col. 7:37-43 |
| wherein the flash suppressor is formed of synthetic resin material, | The accused flash suppressor is alleged to be "constructed of resin." | ¶140 | col. 7:1-4 |
| wherein the flash suppressor has an internal volume of at least 2 cubic inches, | The complaint alleges the accused flash suppressor has an internal volume of "at least 2 cubic inches." | ¶141 | col. 7:51-55 |
| wherein the flash suppressor is at least 10 percent open, | The complaint alleges the accused flash suppressor "is at least 10 percent open and not more than 80 percent open." | ¶141 | col. 8:5-10 |
| wherein the average open area of the perforations is at least 0.001 and not more than 0.05 square inches... | The complaint alleges the perforations have an "average open area of at least 0.001 square inches and not more than 0.05 square inches." | ¶142 | col. 9:30-43 |
| ...and wherein the total number of perforations is at least 100 and not more than 10,000... | The complaint alleges the flash suppressor "has at least 100 perforations and not more than 10,000 perforations." | ¶142 | col. 9:12-14 |
| ...and wherein the average length of the perforations is at least 0.02 inches. | The complaint alleges the flash suppressor "has perforations with an average length of at least 0.02 inches." | ¶142 | col. 9:49-54 |
- Identified Points of Contention:
- Scope Questions: For the ’075 patent, a central question will be whether the accused "flash suppressor" is properly classified as a "fuel retention structure" as that term is used in the patent.
- Technical Questions: The primary point of contention for the ’075 patent will likely be the functional limitation of creating a mixture "too rich to support combustion." The complaint makes a conclusory allegation (Compl. ¶146), but proving this will require significant factual evidence, likely from expert testing, to demonstrate that the accused device actually performs this function under relevant conditions. For the ’132 patent, the dispute will center on the numerous quantitative limitations. The complaint alleges the accused device meets every numerical threshold (Compl. ¶¶141-142), but whether discovery and expert analysis will bear this out is a critical question for the case.
V. Key Claim Terms for Construction
Term: "too rich to support combustion" (’075 Patent, Claim 1)
- Context and Importance: This functional limitation is the central inventive concept of the ’075 patent. Its definition is critical to the infringement analysis, as it sets the performance standard the accused device must meet. Practitioners may focus on this term because its construction will determine the type and rigor of evidence (e.g., expert testing, simulations) needed to prove or disprove infringement.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent's summary states the invention seeks to "inhibit combustion" and "suppress" any explosive event, suggesting a focus on the resulting effect rather than a precise chemical ratio. (’075 Patent, col. 2:57-61; col. 3:15-20). A party could argue any mixture that demonstrably prevents flame propagation under test conditions meets this limitation.
- Evidence for a Narrower Interpretation: The background section discusses the science of combustion in detail, including "stoichiometric" mixtures. (’075 Patent, col. 2:45-56). A party could argue this scientific framing requires the term to be defined by a specific, objective range of fuel-to-air ratios known in the art, which would necessitate more precise proof.
Term: "fuel retention structure" (’075 Patent, Claim 1)
- Context and Importance: This term defines the primary physical component of the invention. Its scope will determine what types of devices are covered by the claim. The dispute will be whether the term is a broad genus covering any component that holds back fuel, or if it is implicitly limited by the embodiments in the specification.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes multiple distinct embodiments as falling under this concept, including an "annular neck dam" and a perforated "flash suppressor," suggesting the term is intended as a genus. (’075 Patent, col. 4:24-40; col. 5:63-65).
- Evidence for a Narrower Interpretation: A party could argue that the detailed descriptions of the specific embodiments (e.g., the flared neck dam of Fig. 3 or the integrated flash suppressor of Fig. 7) implicitly limit the term to structures specifically designed and configured for this purpose, rather than any surface that might incidentally trap fuel.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendants Scepter Corporation and Scepter Canada induced infringement by directing and controlling Scepter Manufacturing to make, use, and sell the infringing products in the U.S., knowing that these acts would constitute infringement of the patents-in-suit (Compl. ¶¶250, 260). The factual basis for this allegation rests on claims of a highly integrated corporate structure, with shared executives and Canadian control over U.S. operations and marketing (Compl. ¶¶43, 47-49, 54, 123).
- Willful Infringement: The complaint pleads willful infringement, alleging that Defendants acted despite an objectively high likelihood that their actions constituted infringement of valid patents, and that they knew or should have known of this risk (Compl. ¶¶252, 262). The pleading does not allege specific pre-suit notice of the patents, but may rely on the parties' history as direct competitors and former business partners to argue that Defendants were aware of Plaintiff’s technology and intellectual property.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of functional proof: Can the Plaintiff provide sufficient technical and expert evidence to demonstrate that the accused Scepter device actually and reliably retains enough fuel to create a mixture "too rich to support combustion" as required by the ’075 patent, or will this functional limitation prove to be an insurmountable evidentiary hurdle?
- A second central question will be one of quantitative compliance: For the ’132 patent, does the accused flash suppressor meet the gauntlet of specific numerical limitations recited in Claim 1 (e.g., internal volume, percent open, perforation count, etc.)? The case may turn on a fact-intensive, "battle of the experts" over the precise measurements of the accused products.
- Finally, a significant legal question will concern corporate liability: Given the complex corporate structure spanning the U.S. and Canada, can the Plaintiff present enough evidence of direction and control to hold the Canadian parent entities liable for infringement committed by the U.S. manufacturing subsidiary, effectively overcoming the corporate form?