DCT
1:22-cv-11301
Tristar Products Inc v. Whelle LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Tristar Products, Inc. (Florida)
- Defendant: Whele LLC d/b/a Perch (Delaware)
- Plaintiff’s Counsel: Fried, Frank, Harris, Shriver & Jacobson LLP
- Case Identification: 1:22-cv-11301, D. Mass., 11/22/2023
- Venue Allegations: Venue is based on Defendant’s principal place of business, business solicitations, and commission of alleged torts within the District of Massachusetts.
- Core Dispute: Plaintiff, as the asserted exclusive licensee, alleges that Defendant’s "Flexi Hose" product infringes four U.S. patents related to expandable and retractable pressure hoses.
- Technical Context: The technology concerns expandable garden hoses that automatically extend under water pressure for use and retract to a compact size when pressure is released, a significant convenience feature in the consumer lawn and garden market.
- Key Procedural History: Plaintiff asserts standing as an exclusive licensee of the patents-in-suit, which are owned by Ragner Technology Corporation (“RTC”). The complaint alleges that Defendant was aware of the patents due to prior licensing negotiations with RTC. Notably, three of the four patents-in-suit expired before the filing of the amended complaint. Subsequent to the complaint's filing, Ex Parte Reexamination Certificates were issued in 2024 for all four patents-in-suit, resulting in the cancellation of all asserted claims.
Case Timeline
| Date | Event |
|---|---|
| 2001-11-24 | Earliest Priority Date for ’448, ’076, and ’944 Patents |
| 2009-06-23 | ’448 Patent Issued |
| 2012-10-19 | 2012 Exclusive License Agreement between Plaintiff and RTC |
| 2013-08-10 | Earliest Priority Date for ’057 Patent |
| 2015-05-05 | ’076 Patent Issued |
| 2015-11-09 | 2015 Exclusive License Agreement between Plaintiff and RTC |
| 2015-11-10 | ’057 Patent Issued |
| 2016-06-21 | ’944 Patent Issued |
| 2022-11-25 | ’076 Patent Expired |
| 2022-11-25 | ’944 Patent Expired |
| 2023-03-09 | ’448 Patent Expired |
| 2023-11-22 | Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,549,448 - "Linearly Retractable Pressure Hose", Issued June 23, 2009
The Invention Explained
- Problem Addressed: The patent addresses the challenge of storing conventional hoses, which are typically bulky and must be manually wound onto a reel. (Compl. ¶3; ’448 Patent, col. 1:13-17).
- The Patented Solution: The invention is a hose with an integrated "biasing means," such as a spring, that exerts a constant force to keep the hose in a retracted state for storage. When water pressure is introduced into the hose, it generates an opposing longitudinal force. If this hydraulic force, often amplified by a flow-restricting nozzle, exceeds the mechanical force of the biasing means, the hose automatically extends to its full length for use. ('448 Patent, col. 1:47-60, col. 2:13-21).
- Technical Importance: This design enables a hose to automatically extend and retract based on water pressure, offering a significant improvement in convenience and compact storage over traditional hose designs. (’448 Patent, col. 2:27-29).
Key Claims at a Glance
- The complaint asserts infringement of at least claim 25. (Compl. ¶24). Claim 25 depends from independent claim 20.
- Independent Claim 20:
- A flexible elongated body with an interior channel for transporting pressurized fluid.
- A biasing means interconnected with the body for generating a first force tending to retract the body.
- A source of pressurized fluid material, with the body’s first end adapted to attach to the source.
- The body’s second end is adapted to attach to a means for restricting flow, which results in higher pressure that generates a second, opposing force sufficient to overcome the first force and extend the body.
- The complaint reserves the right to assert additional claims. (Compl. ¶25).
U.S. Patent No. 9,022,076 - "Linearly Retractable Pressure Hose Structure", Issued May 5, 2015
The Invention Explained
- Problem Addressed: The patent identifies drawbacks in earlier expandable hose designs where the outer hose material bulges between spring coils, making it susceptible to wear, requiring stronger materials, and increasing the hose's retracted volume. (’076 Patent, col. 1:48-60).
- The Patented Solution: The invention proposes a hose structure where the flexible inner tube is unsecured from the outer tube between the end couplers. When pressure is released, the contracting inner tube pulls the outer tube into folds. This construction is distinct from designs where an external spring acts on a cover. (’076 Patent, col. 39:11-44, Abstract).
- Technical Importance: This approach aims to improve the durability and compactness of expandable hoses by altering the structural relationship between the inner elastic layer and the outer protective layer. (’076 Patent, col. 2:8-22).
Key Claims at a Glance
- The complaint asserts infringement of at least claims 1, 2, 4, 7, 12, 13, and 15-17. (Compl. ¶34). Claims 1 and 7 are independent.
- Independent Claim 1:
- A flexible elongated outer tube and a flexible elongated inner tube made of an elastic material.
- First and second couplers secured to the ends of both tubes.
- The couplers are adapted for connection to a fluid source and a flow restrictor, respectively.
- Independent Claim 7:
- A flexible elongated outer tube made from a fabric material and a flexible elongated inner tube made of an elastic material.
- First and second couplers secured to the ends of both tubes.
- Crucially, the inner and outer tubes are unsecured to each other between the first and second ends.
- The complaint reserves the right to assert additional claims. (Compl. ¶34).
U.S. Patent No. 9,371,944 - "Multi-Layer Pressure Actuated Extendable Hose", Issued June 21, 2016
- Technology Synopsis: This patent describes a self-actuated extendable hose comprising a biasing element, a sealing layer, and a reinforced cover layer. The invention focuses on the multi-layer construction where the sealing layer forms a conduit and the reinforced outer cover provides strength, with the structure designed to extend when internal pressure from a fluid source overcomes the retracting force of the biasing element. (’944 Patent, Abstract).
- Asserted Claims: At least claims 12-14 are asserted. (Compl. ¶42). These claims depend from independent claim 6, which in turn depends from independent claim 1.
- Accused Features: The complaint alleges that the Flexi Hose product, having an outer cover and an inner rubber tube that expand and retract with water pressure, infringes by embodying this multi-layer structure. (Compl. ¶43).
U.S. Patent No. 9,182,057 - "Retractable Elastic Bungee Hose", Issued November 10, 2015
- Technology Synopsis: This patent discloses a retractable hose with an inner elastic tube and an outer cover designed to expand and contract radially and longitudinally, similar to a bungee cord. A key feature is that the outer cover can be stretched by external tension beyond the length achieved by internal fluid pressure alone. (’057 Patent, Abstract).
- Asserted Claims: At least claims 13-14 are asserted. (Compl. ¶50). These claims depend from independent claim 1.
- Accused Features: The complaint alleges that the Flexi Hose product infringes because its outer cover radially contracts and can be stretched further by pulling after it has been fully extended by water pressure. (Compl. ¶51).
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is the "Flexi Hose" product line. (Compl. ¶19).
Functionality and Market Context
- The Flexi Hose is marketed as a "Perfectly Expandable" flexible hose that extends to three times its size when filled with water and retracts to its original length for "space-saving storage" when disconnected. (Compl. ¶20). A screenshot from Defendant's website shows the hose in its compact, coiled state and describes its expansion and retraction capabilities. (Compl. ¶20). The complaint alleges the product operates via a non-elastic outer cover and an elastic inner rubber tube; when a user attaches a nozzle or other flow restrictor, water pressure builds within the inner tube, causing it to expand both longitudinally and laterally, thereby extending the hose. (Compl. ¶35).
IV. Analysis of Infringement Allegations
’448 Patent Infringement Allegations
| Claim Element (from Independent Claim 20) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a flexible elongated body having a first end, a second end, and an interior channel defined along its length for transporting a pressurized fluid material | The Flexi Hose product has an outer cover and a rubber tube inside the outer cover, which are connected at each end and through which water flows. | ¶27 | col. 4:10-15 |
| a biasing means interconnected with said flexible elongated body for generating a first force tending to retract the flexible elongated body longitudinally along its length | The inner rubber tube generates a force that tends to retract the outer cover longitudinally. | ¶27 | col. 1:51-56 |
| a source of pressurized fluid material, wherein the first end is adapted to attach to the source of pressurized fluid material | The Flexi Hose is used by connecting it to a water source. | ¶35 | col. 4:15-18 |
| wherein the second end is adapted to attach to a means for restricting the flow of the pressurized fluid material... wherein the means for restricting the flow results in a higher pressure... which generates a second force... sufficient to overcome the first force and cause the flexible elongated body to extend longitudinally | Restricting water flow with a nozzle causes a pressure increase inside the rubber tube, which in turn causes a force that extends the hose. | ¶27 | col. 2:2-21 |
Identified Points of Contention
- Scope Questions: A central question may be whether the accused product's inner "rubber tube" constitutes a "biasing means" within the meaning of the claim. The defense could argue that the patent's specification, which focuses heavily on mechanical springs, limits the scope of "biasing means" to a component separate from the fluid conduit itself. (’448 Patent, col. 4:47-54).
- Technical Questions: The patent describes a biasing means acting upon a flexible body. The complaint alleges the inner rubber tube serves both as the body and the biasing means. The analysis may turn on whether this integrated structure can be mapped onto the claim's distinct elements.
’076 Patent Infringement Allegations
| Claim Element (from Independent Claim 7) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a flexible elongated outer tube constructed from a fabric material having a first end and a second end | The Flexi Hose has a "non-elastic but flexible outer cover with two ends." | ¶35 | col. 42:37-39 |
| a flexible elongated inner tube having a first end and a second end... said inner tube being formed of an elastic material | The Flexi Hose product has an "elastic rubber tube that can expand, with two ends." | ¶35 | col. 42:40-42 |
| a first coupler secured to said first end of said inner and said outer tubes; a second coupler secured to said second end of said inner and said outer tubes | One end of the rubber tube and outer cover are secured to a water valve coupler, and the other ends are secured to a fluid flow coupler. | ¶35 | col. 42:43-46 |
| with the inner and outer tubes unsecured to each other between first and second ends | "[T]he rubber tube and the outer cover are not connected between the couplers." | ¶35 | col. 42:46-49 |
| wherein the flexible elongated inner tube provides a biasing force sufficient to retract the hose from the expanded condition to the substantially decreased or relaxed length | When water pressure is removed, the hose "automatically contracts... due to the rubber tube’s tendency to retract." | ¶35 | col. 42:58-62 |
Identified Points of Contention
- Technical Questions: A key factual question will be whether the inner rubber tube and outer cover of the Flexi Hose are truly "unsecured to each other between [the] first and second ends." The complaint makes this allegation conclusorily, and the infringement analysis will depend on evidence of the product's actual construction. (Compl. ¶35).
V. Key Claim Terms for Construction
’448 Patent (Claim 20)
- The Term: "biasing means"
- Context and Importance: The definition of this term is critical, as the complaint identifies the elastic inner tube itself as the "biasing means". Practitioners may focus on this term because the patent specification’s detailed description and figures exclusively depict a mechanical spring as the "biasing means", separate from the fluid-containing layers.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The use of the general term "means" following the specific example of "spring" ('448 Patent, col. 2:6-7, "biasing spring (or biasing means)") may suggest the patentee did not intend to limit the invention solely to springs.
- Evidence for a Narrower Interpretation: The abstract, summary, and all embodiments described in the specification refer to a "spring" as the operative component providing the retracting force, which may support an interpretation that limits the "biasing means" to such disclosed structures. (’448 Patent, Abstract; col. 4:50-54).
’076 Patent (Claim 7)
- The Term: "unsecured to each other between first and second ends"
- Context and Importance: This limitation defines the core structural arrangement of the claimed invention and is a primary point of distinction over prior art hoses with integrated layers. Infringement of this claim hinges on the factual question of whether the accused product's inner and outer tubes lack any connection between the end fittings.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The plain meaning suggests a lack of direct bonding, stitching, or other permanent attachment, which might still permit incidental frictional contact between the layers during operation.
- Evidence for a Narrower Interpretation: The term's presence distinguishes it from other hose constructions where layers are functionally linked. A court might interpret "unsecured" to require complete and intentional physical separation to allow for the independent movement contemplated by the invention.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of infringement for all patents, asserting that Defendant’s advertising and product instructions encourage and instruct customers to use the Flexi Hose in an infringing manner. (Compl. ¶25, ¶34). For the ’448 Patent, it also alleges contributory infringement, claiming the product has no substantial non-infringing use. (Compl. ¶26).
- Willful Infringement: Willfulness is alleged for all patents based on pre-suit knowledge. The complaint asserts that Defendant was "fully aware" of the patents prior to their expiration due to its engagement in licensing negotiations with the patent owner, RTC. (Compl. ¶30, ¶38, ¶46, ¶54).
VII. Analyst’s Conclusion: Key Questions for the Case
- Threshold Viability of Asserted Claims: A dispositive preliminary issue will be the legal effect of the post-filing cancellation of all asserted claims during Ex Parte Reexamination. The case will likely involve disputes over whether Plaintiff can maintain an action for past damages for a period when the claims were presumptively valid but later found unpatentable.
- Definitional Scope of "Biasing Means": A core technical issue for the ’448 Patent will be one of claim construction: can the term "biasing means", which is described in the patent's specification almost exclusively as a mechanical spring, be construed to cover the integrated elastic inner tube of the accused product, which serves as both the fluid conduit and the source of retraction force?
- Evidentiary Proof of Structure: A key evidentiary question for the ’076 Patent will be one of factual proof: what evidence will be presented to establish that the inner and outer tubes of the accused "Flexi Hose" are "unsecured to each other between [the] first and second ends", a specific structural limitation required by the asserted independent claim?