DCT

2:16-cv-03594

Telebrands Corp v. Ragner Technology Corp

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:16-cv-03594, D.N.J., 06/21/2016
  • Venue Allegations: Venue is alleged to be proper as Defendants conduct business in the District of New Jersey, have principal places of business in the district (Tristar), and have previously submitted to the court's jurisdiction by filing patent infringement actions in the district related to the same patent family.
  • Core Dispute: Plaintiff seeks a declaratory judgment that its POCKET HOSE line of products does not infringe U.S. Patent No. 9,371,944, and that the patent is invalid and unenforceable due to inequitable conduct during prosecution.
  • Technical Context: The technology concerns expandable garden hoses that automatically extend under water pressure and retract when pressure is released, a significant product category in the consumer lawn and garden market.
  • Key Procedural History: The complaint alleges an extensive and contentious history between the parties. Central to the dispute is the allegation that the patent-in-suit (and its parent, the '076 patent) was procured through inequitable conduct by copying claims from a third-party patent (U.S. Patent No. 8,291,941) more than one year after it had issued, in violation of pre-AIA 35 U.S.C. § 135(b)(1). The complaint notes that the parent '076 patent's claims were subsequently rejected by the U.S. Patent and Trademark Office during an ex parte reexamination on these same grounds. Defendants have previously asserted related patents against the Plaintiff.

Case Timeline

Date Event
2002-11-25 Earliest Priority Date Claimed by '944 Patent
2012-10-23 U.S. Patent No. 8,291,941 ('941 patent) issues
2012-10-23 Litigation involving the '941 patent is initiated
2014-04-25 Application for parent '076 patent is filed, allegedly copying claims from the '941 patent
2015-04-28 Application for '944 patent is filed, allegedly copying claims from the '941 patent
2016-05-04 USPTO issues Final Rejection of all claims of the parent '076 patent during reexamination
2016-06-21 U.S. Patent No. 9,371,944 ('944 Patent) issues
2016-06-21 Complaint for Declaratory Judgment is filed

II. Technology and Patent(s)-in-Suit Analysis

  • Patent Identification: U.S. Patent No. 9,371,944, "Multi-Layer Pressure Actuated Extendable Hose," issued June 21, 2016.

The Invention Explained

  • Problem Addressed: The patent's background section describes a problem with prior art expandable hoses where the flexible hose body bulges outward between the coils of an external biasing spring, making the hose susceptible to wear and abrasion ('944 Patent, col. 1:47-61).
  • The Patented Solution: The patent primarily describes solving this problem by indenting the hose body so that it folds within the biasing spring's volume upon retraction ('944 Patent, col. 2:12-24). This design, illustrated in figures such as 4A and 4B, aims to protect the hose body from abrasion and reduce its overall retracted volume ('944 Patent, col. 2:35-40). However, the patent also includes claims directed to an alternative construction that does not use a spring at all, relying instead on the elasticity of an inner tube for retraction.
  • Technical Importance: This technology aims to improve the durability and compactness of expandable hoses, which had become popular consumer products.

Key Claims at a Glance

The complaint seeks a declaratory judgment of non-infringement of "any valid claim" of the '944 patent (Compl. ¶85). While not specifying claims, the inequitable conduct allegations center on subject matter concerning a hose without a biasing spring, which corresponds to independent claims 6 and 12.

  • Independent Claim 6 (Apparatus):
    • a flexible elongated outer tube constructed from a fabric material
    • a flexible elongated inner tube formed of an elastic material
    • a first coupler and a second coupler secured to the ends of the tubes
    • the inner and outer tubes are unsecured to each other between the ends
    • the hose "does not comprise any spring coils"
  • Independent Claim 12 (Method):
    • a method of transporting a fluid using a hose with a non-elastic, bendable outer tube and an expandable, elastic inner tube
    • the inner and outer tubes are secured to each other only at the ends
    • creating an increase in fluid pressure between a first coupler (at the source) and a second coupler (with a fluid flow restrictor)
    • the pressure increase automatically expands the inner tube, increasing the hose's length and width
    • the hose automatically contracts when the pressure differential is removed, with the elastic inner tube providing the retracting force

III. The Accused Instrumentality

  • Product Identification: The complaint identifies Plaintiff's "POCKET HOSE, POCKET HOSE ULTRA, POCKET HOSE TOP BRASS and POCKET HOSE BUNGEE" products (Compl. ¶19).
  • Functionality and Market Context:
    • The complaint describes the accused products as "expandable hose products" (Compl. ¶19). It alleges these products compete directly with the Defendants' "FLEX-ABLE HOSE" products (Compl. ¶27).
    • As a declaratory judgment action focused primarily on unenforceability and invalidity, the complaint does not provide sufficient detail for analysis of the specific technical construction or operation of the POCKET HOSE products.

IV. Analysis of Infringement Allegations

As a complaint for declaratory judgment of non-infringement, the filing does not contain affirmative infringement allegations against the POCKET HOSE products. Plaintiff Telebrands makes the broad assertion that it "has not infringed, and is not infringing, any valid claim of the ‘944 patent" (Compl. ¶85). The complaint provides no claim chart or detailed narrative explaining its theory of non-infringement for any specific claim.

No probative visual evidence provided in complaint.

  • Identified Points of Contention:
    • Scope Questions: Should the matter proceed to an infringement analysis of claims 6 and 12, a central question would be whether the accused POCKET HOSE products practice the negative limitation "does not comprise any spring coils." The dispute could turn on whether any component of the accused products, such as a bunched or woven outer fabric layer, could be construed as "spring coils" under the patent's definition, or if that term is limited to the distinct helical biasing elements described in other embodiments.

V. Key Claim Terms for Construction

  • The Term: "does not comprise any spring coils" (Claim 6)
  • Context and Importance: This negative limitation is the defining feature of the second type of invention claimed in the patent and is critical to distinguishing it from the primary spring-based embodiments. The infringement analysis for a product like the POCKET HOSE, which retracts via an elastic inner tube, will likely hinge entirely on whether it contains any structure that could be construed as "spring coils."
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation (i.e., more likely to be found in an accused product): A party could argue that any element providing a "biasing" or "retracting force," aside from the inner tube itself, might function as a spring. The specification uses the term "biasing means" and "spring" throughout when discussing the primary embodiment (e.g., '944 Patent, col. 3:1-8). If the outer fabric of an accused hose is constructed to assist in retraction, a patentee might argue it serves the function of a spring, even if not a traditional coil.
    • Evidence for a Narrower Interpretation (i.e., less likely to be found in an accused product): The patent's specification and figures consistently depict "spring coils" as distinct, helical structures made of materials like spring steel (e.g., spring 36, 76, 86; '944 Patent, col. 3:3-8, col. 12:50-57). The explicit inclusion of the negative limitation "does not comprise any spring coils" in claims 6 and 12, while other independent claims (e.g., claim 1) explicitly require a "biasing spring," creates a strong inference that the patentee intended to carve out and claim an embodiment that lacks such a separate, distinct helical structure.

VI. Other Allegations

  • Indirect Infringement: Plaintiff seeks a declaratory judgment that it has not induced or contributorily infringed any claim of the '944 patent (Compl. ¶¶ 86-87). No specific facts related to these allegations are provided beyond the general assertion of non-infringement.
  • Unenforceability / Invalidity: The core of the complaint rests on allegations of invalidity and unenforceability due to inequitable conduct (Compl., Counts One and Three). The complaint alleges that Defendants, during the prosecution of the application leading to the '944 patent (and its parent '076 patent), engaged in a scheme to deceive the U.S. Patent and Trademark Office (USPTO) (Compl. ¶¶ 78, 103). The specific allegations include:
    • Knowingly copying claims from an unrelated, third-party patent, U.S. Patent No. 8,291,941, which issued on October 23, 2012 (Compl. ¶¶ 70-71).
    • Filing these copied claims in the applications for the '076 and '944 patents more than one year after the '941 patent had issued, which the complaint alleges violates the statutory bar of pre-AIA 35 U.S.C. § 135(b)(1) (Compl. ¶¶ 72-73).
    • Intentionally failing to disclose the copying and the source patent to the USPTO, allegedly in violation of the duty of candor (Compl. ¶¶ 74, 99-100).
    • The complaint further alleges that the USPTO, upon having this information presented during a subsequent reexamination of the parent '076 patent, issued a Final Rejection of all its claims on the basis of the § 135(b)(1) statutory bar and anticipation by the '941 patent (Compl. ¶¶ 55-56, 62).

VII. Analyst’s Conclusion: Key Questions for the Case

This declaratory judgment action appears to be a preemptive strike focused less on a technical non-infringement dispute and more on challenging the fundamental validity and enforceability of the '944 patent.

  • A central question will be one of inequitable conduct: Did the patentee intentionally conceal material information—specifically, the act of copying claims from the '941 patent more than one year after its issuance—from the USPTO with the intent to deceive the agency? The complaint's citation of the adverse reexamination decision for the parent patent will be a key piece of evidence in this inquiry.
  • A related dispositive issue is one of statutory validity: Irrespective of intent, are the claims of the '944 patent that cover a hose without spring coils invalid under 35 U.S.C. § 135(b)(1) for being directed to the same subject matter as claims in the '941 patent and filed more than one year after the '941 patent was granted?
  • Should the patent survive these challenges, a final question is one of definitional scope: Can the negative limitation "does not comprise any spring coils" be interpreted to read on a product that uses a woven outer fabric, in addition to an elastic inner tube, to achieve retraction, and do the accused POCKET HOSE products possess such a feature?