Omnitek Partners LLC v. Assured Automation Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Omnitek Partners LLC (New Jersey)
  • Defendant: Assured Automation, Inc. (New Jersey)
  • Plaintiff’s Counsel: Kluger Healey, LLC; Garteiser Honea, PLLC
• Case Identification: 2:24-cv-01687, D.N.J., 03/06/2024
• Venue Allegations: Venue is asserted on the basis that Defendant is a New Jersey company deemed to reside in the district, and alternatively, that acts of infringement occur in the district where Defendant has a regular and established place of business.
• Core Dispute: Plaintiff alleges that Defendant’s heat-activated pneumatic shut-off valves infringe a patent related to temperature-sensitive safety valves that use a shape memory actuator.
• Technical Context: The technology concerns safety valves designed to automatically stop the flow of a fluid when its temperature exceeds a safe, predetermined threshold.
• Key Procedural History: The patent-in-suit expired on April 23, 2023; therefore, this action seeks damages only for past infringement. The complaint also discloses a related case filed by the Plaintiff, [Omnitek Partners LLC](https://ai-lab.exparte.com/party/omnitek-partners-llc) v. Toto USA Inc, in the Northern District of Georgia.

Case Timeline

Date	Event
2002-01-08	'889 Patent Priority Date
2014-04-15	'889 Patent Issue Date
2023-04-23	'889 Patent Expiration Date
2024-03-06	Complaint Filing Date

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

U.S. Patent No. 8,695,889 - "Temperature Sensitive Valve Having Shape Memory Actuator"

The Invention Explained

• Problem Addressed: The patent identifies a risk of people, particularly children, being burned by overly hot liquids dispensed from containers like disposable coffee cups, travel mugs, and baby bottles, or from plumbing fixtures like showers and sinks. The background notes a lack of existing devices that are both reliable and inexpensive enough for these applications ('889 Patent, col. 1:21-42).
• The Patented Solution: The invention is a valve that incorporates a "shape memory actuator," a material (such as a nickel-titanium alloy) that changes from one shape to another when heated past a specific transition temperature. This change in shape is used to mechanically close an opening in the valve, thereby automatically stopping the flow of a dangerously hot fluid ('889 Patent, Abstract; col. 7:20-31). The patent describes various embodiments, including a valve integrated into a disposable coffee lid and another designed for a baby bottle ('889 Patent, col. 7:3-10; col. 9:21-30).
• Technical Importance: The invention purports to offer a simple, automatic, and potentially low-cost safety mechanism to prevent scalding injuries from common household products ('889 Patent, col. 1:43-58).

Key Claims at a Glance

• The complaint asserts infringement of at least independent claim 1 (Compl. ¶24).
• The essential elements of independent claim 1 are:
  • A valve for preventing fluid flow above a predetermined temperature.
  • A body with at least one opening for fluid to pass below the threshold.
  • A shape memory actuator for substantially closing the opening when the temperature is above the threshold.
  • The valve is configured such that a flow of the fluid through the body acts to close the shape memory actuator against the opening.
• The complaint does not specify any dependent claims but alleges infringement of "one or more claims, including at least Claim 1" (Compl. ¶24).

III. The Accused Instrumentality

Product Identification

• The accused products are identified as the "FireChek® Heat Activated Pneumatic Shut-Off Valve" ("Products") (Compl. ¶24).

Functionality and Market Context

• The complaint alleges that these products are manufactured, used, sold, and imported by the Defendant (Compl. ¶24). The name suggests the products are valves used in pneumatic systems that are designed to shut off flow in response to heat, such as in a fire. The complaint alleges direct infringement through Defendant's own internal testing and use of the products (Compl. ¶25). The complaint does not provide further technical details on the operation or market position of the accused products.

IV. Analysis of Infringement Allegations

The complaint states that a claim chart demonstrating infringement was attached as Exhibit B (Compl. ¶¶ 24, 27). However, this exhibit was not included with the publicly filed complaint. The narrative infringement theory alleges that the Defendant’s Products "practice the technology claimed by the '889 Patent" and "satisfy all elements of the exemplary claim 1" (Compl. ¶27). The complaint asserts infringement either literally or under the doctrine of equivalents (Compl. ¶25).

No probative visual evidence provided in complaint.

Identified Points of Contention

• Scope Questions: A potential dispute may arise from the application of the '889 Patent, whose specification focuses on consumer applications like coffee lids and baby bottles, to the accused "Pneumatic Shut-Off Valve," which appears to be an industrial product. The construction of claim terms will determine if the patent's scope can read on such a different technical environment.
• Technical Questions: A key question will be whether the accused pneumatic valve contains a "shape memory actuator" as that term is understood in the patent. Further, the complaint does not provide evidence to show how the accused valve meets the functional limitation that "a flow of the fluid... acts to close the shape memory actuator," which may require a specific interaction between the fluid stream and the actuator mechanism ('889 Patent, col. 13:40-44).

V. Key Claim Terms for Construction

The Term: "shape memory actuator"

• Context and Importance: This term is the central technological element of the invention. Its definition will be critical to the infringement analysis, as the Plaintiff must prove the accused "FireChek" valve contains such a component. Practitioners may focus on this term because its scope will determine whether it is limited to the specific alloys (e.g., NiTi) and consumer-product embodiments described in the patent or can encompass other heat-responsive materials and mechanisms used in industrial pneumatic valves.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The claims use the general term "shape memory actuator" without specifying a particular material. The specification also mentions that a "bi-metal actuator" could be used as an alternative, suggesting the term is not limited to a single type of alloy ('889 Patent, col. 7:1-3).
  • Evidence for a Narrower Interpretation: The detailed description repeatedly provides examples of nickel-titanium (NiTi) alloys and focuses heavily on their specific properties ('889 Patent, col. 7:32-41). A defendant may argue that the invention is tied to the specific types of actuators disclosed for use in hot liquid containers.

The Term: "configured such that a flow of the fluid through the body acts to close the shape memory actuator"

• Context and Importance: This functional language in Claim 1 appears to require a specific relationship between the fluid stream and the valve's closing mechanism. The infringement analysis will turn on whether the accused product operates in this specific manner.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A party could argue this simply means the fluid's heat is the trigger that causes the actuator to close, with "acts to close" being a general description of the overall cause-and-effect sequence.
  • Evidence for a Narrower Interpretation: The specification provides a more specific context, stating the valve is "preferably positioned with the actuator 406 on the pressurized side of the fluid flow such that the fluid flow tends to aid in closing the actuator" ('889 Patent, col. 12:1-4). This suggests the fluid's physical pressure or force, not just its temperature, may be required to "aid in closing" the actuator, potentially narrowing the claim's scope.

VI. Other Allegations

• Indirect Infringement: The complaint includes a general allegation of contributory and induced infringement (Compl. ¶24). However, it does not plead specific facts to support these claims, such as identifying a specific component supplied for contributory infringement or citing instructional materials that would encourage infringing use by third parties.
• Willful Infringement: Willfulness is alleged based on Defendant's knowledge of infringement "at least as of the service of the present complaint" (Compl. ¶22). This allegation, if proven, would only support a claim for enhanced damages based on post-suit conduct.

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

1. A core issue will be one of technical scope and applicability: can claims from a patent whose specification is centered on safety valves for consumer hot-liquid containers (e.g., coffee cups, baby bottles) be construed to cover an industrial "Heat Activated Pneumatic Shut-Off Valve"? The resolution will depend heavily on the court's construction of key claim terms.

2. A second central issue will be claim construction of functional language: does the limitation requiring that the "flow of the fluid... acts to close" the actuator necessitate a direct physical force from the fluid stream to assist in closing, as suggested by the specification, or is it met simply by the fluid's heat triggering the actuator's change in shape?

3. Finally, a key evidentiary question will be one of proof: lacking a detailed claim chart in the complaint, the Plaintiff will bear the burden of demonstrating, through discovery and expert testimony, how the specific components and mechanism of the accused FireChek® valve meet each element of the asserted claim, particularly the "shape memory actuator" limitation.