DCT
2:24-cv-03201
Express Parts LLC v. BHRS Group LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Express Parts LLC (New Jersey) and Crisol Technology Hongkong Limited (Hong Kong)
- Defendant: BHRS Group, LLC (New Jersey)
- Plaintiff’s Counsel: Wang, Gao & Associates, P.C.; Arch & Lake, LLP
- Case Identification: 2:24-cv-03201, D.N.J., 03/15/2024
- Venue Allegations: Venue is alleged to be proper in the District of New Jersey because the Defendant, BHRS Group, LLC, resides and has its principal place of business in the district.
- Core Dispute: Plaintiffs seek a declaratory judgment that their water filter cartridges do not infringe Defendant’s patent and that the patent is invalid, following Defendant's infringement complaints to e-commerce platforms that resulted in the delisting of Plaintiffs’ products.
- Technical Context: The technology concerns the mechanical connection for replaceable water filter cartridges used in water coolers, specifically a bayonet-style mount with a secondary security interlock.
- Key Procedural History: The dispute arose after Defendant BHRS Group, LLC submitted infringement complaints to Amazon and Shopify regarding Plaintiffs' products. This action prompted Amazon to initiate its Patent Evaluation Express (APEX) procedure and resulted in both platforms delisting Plaintiffs' products from sale. The complaint further alleges the patent is invalid under the on-sale bar because the Defendant sold a "Prior Product" embodying the invention more than one year before the patent's filing date.
Case Timeline
| Date | Event |
|---|---|
| 2017-03-10 | Alleged first date of sale for BHRS's "Prior Product" |
| 2018-06-11 | Priority Date for U.S. Patent No. 11,123,667 |
| 2021-09-21 | U.S. Patent No. 11,123,667 Issued |
| 2023-04-27 | Accused Product first available for sale on Amazon |
| 2023-07-29 | Crisol received Intellectual Property Infringement Notice from Shopify |
| 2023-08-23 | Amazon notified Express Parts of APEX proceeding initiated by BHRS |
| 2023-09-22 | Express Parts executed and returned the APEX Agreement |
| 2024-03-15 | Complaint for Declaratory Judgment filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,123,667 - Water Cooler Filter With Secure Bayonet-type Connection
- Patent Identification: U.S. Patent No. 11,123,667, "Water Cooler Filter With Secure Bayonet-type Connection," issued September 21, 2021.
The Invention Explained
- Problem Addressed: The patent identifies a need for an improved water cooler filter connection, stating that the interlock mechanisms of conventional filters may not be "sufficiently secure" for some applications (’667 Patent, col. 2:3-6).
- The Patented Solution: The invention introduces a "second interlock" to enhance the security of the filter connection. This is achieved by adding "one or more protrusions" on the filter's base surface that must align with and be received by corresponding "recesses" in the housing. Critically, the filter base includes an "inclined surface portion" from which the protrusions extend. As the user rotates the filter, this inclined surface causes the filter and housing to separate slightly, allowing the protrusions to clear the housing surface and then seat securely into the recesses upon full rotation (’667 Patent, Abstract; col. 2:16-35). The patent specifies these protrusions and recesses can be complex shapes, such as logos or words, to create a unique keying system (’667 Patent, col. 6:1-3).
- Technical Importance: The described dual-interlock system aims to create a more robust and leak-proof connection by ensuring the filter is fully and correctly seated before it can be considered locked in place (’667 Patent, col. 2:13-15).
Key Claims at a Glance
- The complaint asserts non-infringement and invalidity of claims 1-21, with a focus on independent claim 1 (Compl. ¶¶ 36, 45).
- Independent Claim 1 recites a filter for a water cooler, the key elements of which include:
- A cylindrical base with a base surface.
- A filter neck extending from the base surface, which has various sections and ports.
- An "elongated protrusion" on the side surface of the neck (forming the first, conventional bayonet interlock).
- A "base surface comprising an inclined surface portion having one or more protrusions extending from said inclined surface portion" (forming the second, novel interlock).
- The filter end is configured for a "bayonet-type fashion" connection.
- The complaint notes that claims 2-21 all depend from claim 1 (Compl. ¶45).
III. The Accused Instrumentality
Product Identification
The accused products are water filter cartridges sold by Plaintiff Express Parts under the “Crystala Filters” brand (e.g., ASIN B0C374WCS1) and by Plaintiff Crisol under the “Glacier Fresh” brand (Compl. ¶¶ 10-13). The complaint asserts the products from both brands are "essentially identical for the purposes relevant to this declaratory judgment action" (Compl. ¶14).
Functionality and Market Context
The products are replacement filter cartridges for water coolers, sold via online marketplaces like Amazon.com and Shopify.com (Compl. ¶¶ 9, 12). The complaint alleges that these e-commerce platforms are the sole U.S. sales channels for the Plaintiffs (Compl. ¶28). The core of the non-infringement argument is based on the physical structure of the accused product's connection interface, which Plaintiffs allege lacks key features recited in the patent (Compl. ¶¶ 49-51).
IV. Analysis of Infringement Allegations
This action is for a declaratory judgment of non-infringement. The following table summarizes the Plaintiffs’ arguments for why their products do not meet the limitations of the asserted patent claim.
’667 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| said base surface comprising an inclined surface portion having one or more protrusions extending from said inclined surface portion | The complaint alleges that the Accused Product "does not include a base surface with 'an inclined surface portion having one or more protrusions extending from said inclined surface portion.'" | ¶50 | col. 9:8-10 |
| [Implicit: one or more protrusions] | The complaint further alleges that the Accused Product "has no protrusions extending from an inclined surface portion of a base surface as recited in Claim 1," and presents photographs to support this assertion. The photograph of the accused product shows the base of the filter connection. | ¶51; p. 13 | col. 9:9-10 |
Identified Points of Contention
- Scope Questions: The dispute raises a question about the scope of the term "protrusions." The patent specification provides an example of a "complex set of protrusions" forming the word "AVALON," but the claim requires only "one or more protrusions" (’667 Patent, col. 6:1-3; col. 9:9). A central issue will be whether any feature on the accused product's base could be construed as a "protrusion" under the claim's language, even if it is not a complex logo.
- Technical Questions: A primary factual question is whether the accused products possess any structure that meets the claim limitation of an "inclined surface portion having one or more protrusions." The complaint includes photographs of the accused product, asserting that a "simple visual examination" reveals the absence of such features (Compl. ¶51; p. 13). The court will need to compare the physical structure of the accused product to the requirements of the claim.
V. Key Claim Terms for Construction
- The Term: "protrusions extending from said inclined surface portion"
- Context and Importance: This term is the lynchpin of the non-infringement argument. The plaintiffs allege their products entirely lack this feature, which, if true, would be dispositive of non-infringement for claim 1 and all dependent claims (Compl. ¶¶ 46, 51). Practitioners may focus on this term because the patent's specification and claims offer potential arguments for both broader and narrower interpretations.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Independent claim 1 requires only "one or more protrusions," without specifying their complexity, shape, or function beyond existing on an inclined surface. Dependent claim 2 adds limitations requiring the protrusions to be "selected from the... group: geometric shapes, symbols, characters, letters, numbers, words, logos, designs..." (’667 Patent, col. 9:14-19). This may suggest that the bare term "protrusions" in claim 1 should be interpreted more broadly to cover simpler structures not rising to the level of a symbol or logo.
- Evidence for a Narrower Interpretation: The patent's abstract describes a "complex set of protrusions," and the detailed description repeatedly emphasizes that the protrusions and recesses form a "second interlock" and may form "words, logos, designs and the like," with "AVALON" given as the specific example (’667 Patent, Abstract; col. 2:47-54; col. 6:1-3). This context may support an interpretation that the claimed "protrusions" must be distinct, shaped features intended to function as part of a key-and-lock security system, not merely incidental surface variations.
VI. Other Allegations
- Invalidity ("On-Sale Bar"): The complaint alleges that claim 1 is invalid under 35 U.S.C. § 102(a)(1) based on an on-sale bar (Compl. ¶37). It asserts that the defendant, BHRS, sold a "Prior Product" (ASIN B06XJ86F7L) embodying every element of claim 1 as early as March 10, 2017, more than one year before the patent's June 11, 2018 filing date (Compl. ¶¶ 37-38). The complaint provides a visual comparison of photographs of the alleged prior art product against figures from the ’667 Patent to support this allegation (Compl. ¶39; p. 9).
- Exceptional Case: Plaintiffs seek a declaration that the action is an "exceptional case" under 35 U.S.C. § 285, entitling them to attorneys' fees (Compl., Prayer for Relief ¶e). The basis for this allegation appears to be that the defendant asserted infringement to e-commerce platforms despite the fact that, according to Plaintiffs, a "simple visual examination of the readily available and inexpensive Accused Product" would have revealed non-infringement (Compl. ¶51).
VII. Analyst’s Conclusion: Key Questions for the Case
This declaratory judgment action presents two primary, dispositive questions for the court:
A core issue will be one of invalidity: Did the defendant’s own prior product, allegedly sold more than one year before the patent’s filing date, publicly disclose all elements of the asserted claims? The resolution will depend on a factual comparison of that prior product to the patent’s claims, an analysis for which the complaint provides initial photographic evidence.
A second key question will be one of infringement, hinging on both claim construction and factual evidence: Can the claim term "protrusions extending from said inclined surface portion" be construed to read on the accused filter cartridges? This will require the court to first define the scope of "protrusions" and then determine, as a matter of fact, whether the accused products possess such a feature.