Magen Eco Energy ACS Ltd v. Hayward Industries Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Magen Eco Energy (A.C.S) Ltd. (Israel) and Pace Research Ltd. (Texas)
  • Defendant: Hayward Industries, Inc. (New Jersey)
  • Plaintiff’s Counsel: Kaplan Gilman Pergament, LLP
• Case Identification: 2:23-cv-22980, D.N.J., 12/08/2023
• Venue Allegations: Venue is alleged to be proper in the District of New Jersey because Defendant Hayward Industries, Inc. has a principal place of business in the district.
• Core Dispute: Plaintiff, a manufacturer and seller of pool equipment, seeks a declaratory judgment that its products do not infringe Defendant's patent related to pool chlorinator cartridges and that the patent is invalid.
• Technical Context: The technology concerns electrolytic salt chlorinators for swimming pools, specifically the design of replaceable cell cartridges that generate chlorine from salt in the water.
• Key Procedural History: The lawsuit was filed in response to an "Amazon Patent Evaluation Express Agreement Notice" (APEX Notice) that Defendant Hayward sent to Amazon on November 20, 2023. This notice alleged that Plaintiff's products infringe Hayward's patent, creating the immediate threat of delisting from Amazon and providing the basis for this declaratory judgment action.

Case Timeline

Date	Event
2011-07-29	’081 Patent Priority Date
2018-12-18	’081 Patent Issue Date
2023-11-20	Hayward sends APEX Notice to Amazon
2023-12-08	Complaint Filing Date

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

• Patent Identification: U.S. Patent No. 10,156,081, "Chlorinators and Replaceable Cell Cartridges Therefor," issued December 18, 2018 (’081 Patent).

The Invention Explained

• Problem Addressed: The patent's background section describes several problems with prior art salt chlorinator systems. These include the use of separate temperature and flow sensors that are not replaced with the consumable chlorinator cartridge, leading to operation with old or faulty sensors. It also notes that standard connector systems allow for the use of "knock-off" cell cartridges that may be incompatible or unsafe when paired with certain controllers ('081 Patent, col. 1:41-col. 2:8).
• The Patented Solution: The invention is a replaceable chlorinator cell cartridge that integrates key components into a single, disposable unit. The cartridge houses not only the electrically-charged plates that generate chlorine but also a printed circuit board (PCB) with built-in sensors (e.g., a bi-directional flow switch), non-volatile memory, and a unique connector plug ('081 Patent, Abstract; col. 2:21-37). This design ensures that critical sensors are replaced along with the cell and that only compatible, authentic cartridges can be connected to the controller, as illustrated in the overall system of FIG. 1.
• Technical Importance: This integrated approach aims to enhance the safety and reliability of pool chlorination systems by bundling the consumable cell with its necessary operational sensors and by creating a proprietary connection to control the replacement cartridge market ('081 Patent, col. 2:1-8).

Key Claims at a Glance

• The complaint notes that Defendant Hayward asserted claim 11 in its pre-suit APEX notice (Compl. ¶6). The Plaintiff seeks a declaration of non-infringement and invalidity as to all claims of the patent (Prayer for Relief, A, B).
• Independent claim 11 recites:
  • A replaceable cartridge for a chlorinator, comprising:
  • a replaceable chlorinator cartridge removably positionable within a chlorinator body;
  • said cartridge including a cartridge body, a cartridge cap, a plurality of electrolytic plates and at least one circuit element in electrical communication with the plates;
  • said cartridge housing the electrolytic plates and the circuit element;
  • said cartridge cap housing the circuit element and said cartridge body housing the electrolytic plates;
  • the cartridge, plates, and circuit element forming a single unit removable from the chlorinator body; and
  • the plates and cartridge are positioned along a first axis for fluid flow, where this first axis is transverse to a second axis along which the single unit is removed from the chlorinator.

III. The Accused Instrumentality

Product Identification

• The complaint identifies "at least two products being sold on Amazon under Amazon Standard Identification Numbers B07PVL1R25 B07PXKYWX5 (collectively, the 'Accused Products')" (Compl. ¶6).

Functionality and Market Context

• The complaint does not provide specific technical details about the structure or operation of the Accused Products. It makes the legal assertion that the products "include the prior art structure from which the patent applicant specifically distinguished the claims of the '081 patent" (Compl. ¶23).
• The complaint alleges that Amazon is a "source of significant sales" for the Accused Products and that Plaintiff Magen, as the supplier, "stands to lose significant revenue" if the products are removed from the platform (Compl. ¶¶ 13, 15).

IV. Analysis of Infringement Allegations

The complaint is for declaratory judgment and therefore contains denials of infringement rather than affirmative allegations. It does not provide sufficient detail to construct a comparative claim chart. The primary non-infringement theory is presented in narrative form.

Plaintiff Magen alleges that "one or more claim limitations of the claims in suit are not present, either literally or by equivalents, in the Accused Products" (Compl. ¶23). The central theory advanced is that the Accused Products embody prior art designs that the patentee disclaimed during prosecution to secure the '081 patent (Compl. ¶23). This suggests an argument centered on claim construction and prosecution history estoppel.

No probative visual evidence provided in complaint.

Identified Points of Contention

• Factual Question: A primary question, for which the complaint offers no evidence, is the actual design of the Accused Products. Discovery will be required to determine if they contain a "circuit element" that is housed within the "cartridge cap" and "cartridge body" to form a "single unit" as recited in claim 11.
• Scope Question: The dispute may center on whether the Accused Products constitute a "single unit" under the claimed definition. If, for example, the product's cap is a generic, separate component from the body containing the electrolytic plates and any associated electronics, Magen may argue it does not meet this limitation.
• Technical Question: Does the accused device contain "at least one circuit element" as that term would be construed in light of the patent's specification, which heavily emphasizes a printed circuit board with integrated sensors and memory?

V. Key Claim Terms for Construction

• The Term: "at least one circuit element"

• Context and Importance: This term is at the core of the patent's purported novelty. The patent's specification describes this element as a key part of an integrated solution that includes a printed circuit board, sensors, and memory ('081 Patent, col. 5:48-61). Practitioners may focus on this term because Magen will likely argue that its products lack such an integrated electronic component, while Hayward may argue for a broader definition covering any electrical component.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The plain language of the term "circuit element" is broad and could arguably cover simple components like wires or electrical contacts, not just a complex PCB. Dependent claim 12 adds a limitation for "a printed circuit board and a microprocessor," which could imply that the independent claim's "circuit element" is something less complex.
  • Evidence for a Narrower Interpretation: The specification consistently describes the invention in the context of a "printed circuit board (PCB) 86" ('081 Patent, col. 5:52) that includes a "microprocessor, non-volatile memory, at least one sensor 88 and a reed switch 90" ('081 Patent, col. 5:56-58). A party could argue that these detailed descriptions limit the scope of "circuit element" to the invention actually disclosed.

• The Term: "single unit removable from said chlorinator body"

• Context and Importance: This term defines the physical configuration of the claimed invention. The infringement analysis may depend on whether the Accused Product's components (cartridge, cap, plates, circuit element) are integrated into a single, cohesive assembly.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The language could be interpreted to mean any assembly that can be removed from the main chlorinator housing in one piece, regardless of how its sub-components are internally attached.
  • Evidence for a Narrower Interpretation: The figures, such as the exploded view in FIG. 12, depict a highly integrated cartridge (40) where the cap (58) and body (56) are specifically designed to interconnect and house the internal electronics and plates as one cohesive product ('081 Patent, col. 5:10-14). Magen may argue that a product using a generic cap that is not structurally integrated with the cell body does not form a "single unit" in the manner claimed.

VI. Other Allegations

Indirect Infringement

• The complaint seeks a declaratory judgment that the Accused Products do not "induce infringement or contribute to the infringement of" the '081 Patent (Prayer for Relief, A). As a DJ complaint, it does not plead facts supporting these allegations but rather seeks to preemptively defeat them.

Willful Infringement

• Willfulness is not alleged by the DJ plaintiff. However, Magen does request a declaration that the case is "exceptional" and an award of attorneys' fees pursuant to 35 U.S.C. §285, asserting that Hayward's infringement claims are "meritless" (Compl. ¶24; Prayer for Relief, C).

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

• A key evidentiary question will be one of product design: what is the precise construction of the Accused Products? The resolution of the case depends entirely on technical facts not present in the complaint, specifically whether Magen’s cartridges incorporate an integrated "circuit element" within a "single unit" cartridge and cap assembly.
• A central legal issue will be one of claim construction: can the term "at least one circuit element" be interpreted broadly to cover simple electrical contacts, or is its meaning confined by the specification's detailed disclosure of an integrated printed circuit board with on-board memory and sensors?
• A third core issue will be invalidity: the complaint identifies numerous prior art references (Compl. ¶22). The case may turn on whether the combination of features in claim 11—specifically the integration of a "circuit element" into a "single unit" removable cartridge—would have been obvious to a person of ordinary skill in the art at the time of the invention.