DCT
2:24-cv-10460
Telebrands Corp v. Tristar Products Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Telebrands Corp. (New Jersey)
- Defendant: Tristar Products, Inc. (Florida) and Trend Makers, LLC (Delaware)
- Plaintiff’s Counsel: Stone & Magnanini LLP
- Case Identification: 2:24-cv-10460, D.N.J., 11/12/2024
- Venue Allegations: Plaintiff alleges venue is proper in the District of New Jersey because Defendant Tristar has its principal place of business in the district, and both defendants have allegedly committed acts of infringement and maintain a regular and established place of business there. The complaint also asserts that Trend Makers is an alter ego of Tristar.
- Core Dispute: Plaintiff alleges that Defendants’ "Flex-Able Hose" line of expandable garden hoses infringes six of its utility and design patents related to expandable and contractible hose technology.
- Technical Context: The technology concerns lightweight, kink-resistant garden hoses comprising an elastic inner tube and a non-elastic outer fabric sheath, which allows the hose to automatically expand under water pressure and contract for compact storage.
- Key Procedural History: The complaint references a history of litigation between the parties over similar products. It also notes a 2021 court ruling that added a co-inventor to the patents-in-suit, whose rights were subsequently acquired by the Plaintiff. Plaintiff alleges that a prior license agreement between Defendants and the co-inventor's company did not cover the patents-in-suit and was terminated prior to the infringing activity alleged in this action. Plaintiff further alleges that Defendants' marking of their products with a now-invalidated patent containing claims copied from one of the patents-in-suit constitutes an admission of infringement.
Case Timeline
| Date | Event |
|---|---|
| 2011-11-04 | Priority Date for Utility Patents-in-Suit ('941, '942, '213, '272) |
| 2012-01-01 | Defendants begin promoting accused "Flex-Able Hose" products |
| 2012-03-24 | Plaintiff begins marketing "Pocket Hose" products |
| 2012-07-19 | Priority Date for Design Patents-in-Suit ('681, '186) |
| 2012-10-23 | '941 Patent and '942 Patent Issue Dates |
| 2014-06-24 | '213 Patent Issue Date |
| 2015-02-17 | '681 Design Patent Issue Date |
| 2015-03-10 | '186 Design Patent Issue Date |
| 2017-02-28 | '272 Patent Issue Date |
| 2021-08-11 | Court determines Gary Ragner is a co-inventor |
| 2022-04-01 | Defendant Trend Makers is allegedly formed |
| 2022-08-12 | Alleged termination of RTC-Tristar License Agreements |
| 2023-09-26 | Co-inventor's rights assigned to Plaintiff |
| 2024-11-12 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,291,941 - "Expandable and Contractible Hose"
The Invention Explained
- Problem Addressed: The patent’s background section identifies problems with conventional hoses, including their tendency to kink, their heavy and bulky nature, and the difficulty of storing and handling them. (’941 Patent, col. 1:24-55).
- The Patented Solution: The invention is a hose with two distinct layers: an inner tube made of an elastic material (like natural latex rubber) and a separate, non-elastic outer tube made of a fabric material (like woven nylon). (’941 Patent, col. 7:25-48). The two tubes are attached to each other only at the couplers on each end and are otherwise "unattached unbonded and unconnected" along their entire length. (’941 Patent, col. 1:15-20). When pressurized fluid enters, the elastic inner tube expands longitudinally and laterally until it is constrained by the non-elastic outer tube, which unfolds to its full, smooth length. When pressure is released, the inner tube retracts, causing the outer tube to automatically contract and gather into a compact, folded state. (’941 Patent, Abstract).
- Technical Importance: This design produced a hose that was lightweight and automatically contracted for easy, kink-free storage, while expanding to a full-length hose for use. (’941 Patent, col. 2:56-62).
Key Claims at a Glance
- The complaint asserts "one or more claims" of the '941 Patent (Compl. ¶46). The first independent claim is Claim 1.
- Essential elements of Claim 1 include:
- A flexible elongated outer tube made of a fabric material.
- A flexible elongated inner tube made of an elastic material.
- A first and second coupler secured to the respective ends of the inner and outer tubes.
- The inner and outer tubes are "unsecured to each other between first and second ends."
- The second coupler connects to a "fluid flow restrictor."
- The flow restrictor creates increased fluid pressure, causing the inner tube to expand longitudinally, and a decrease in pressure causes the hose to contract.
U.S. Patent No. 8,291,942 - "Expandable Hose Assembly"
The Invention Explained
- Problem Addressed: The patent addresses the same problems as its parent '941 patent: the storage, kinking, and weight issues of conventional hoses. (’942 Patent, col. 1:20-51).
- The Patented Solution: The patent describes a similar two-layer hose assembly but frames the outer tube as a "soft non-elastic based control material" that constrains the expansion of the elastic inner tube. (’942 Patent, Claim 1). In its contracted state, the outer tube is described as being in an "undulating state" on the surface of the inner tube. (’942 Patent, Claim 1). The patent also discloses placing indicia on the outer tube that are readable in the expanded state but obscured in the contracted state, providing a visual indicator of the hose's condition. (’942 Patent, col. 9:18-29; Figs. 9-10).
- Technical Importance: This patent refines the expandable hose concept by explicitly claiming the functional role of the outer layer as a "control material" and its specific "undulating" appearance when contracted. (’942 Patent, Claim 1).
Key Claims at a Glance
- The complaint asserts "one or more claims" of the '942 Patent (Compl. ¶68). The first independent claim is Claim 1.
- Essential elements of Claim 1 include:
- An outer tube assembly of a "soft non-elastic based control material."
- An inner tube member of an "elastic based material."
- First and second couplers attaching the ends.
- The outer tube is "unattached" from the inner tube between the couplers.
- The assembly has a shortened "contracted state" where the outer tube is in an "undulating state."
- The assembly has a longer "expanded state" upon the application of fluid pressure.
U.S. Patent No. 8,757,213 - "Commercial Hose"
- Technology Synopsis: This patent describes a commercial-grade version of the expandable hose technology. The invention specifies an inner tube made of thermoplastic elastomer and an outer tube of non-elastic polyester, connected by metal couplers, one of which includes an integral flow restrictor, to enhance durability for more demanding applications. (’213 Patent, Abstract).
- Asserted Claims: "one or more claims" (Compl. ¶112).
- Accused Features: The "Flex-Able Hose" products, with specific mention of the "Flex-Able Bungee Hose." (Compl. ¶27).
U.S. Patent No. 9,581,272 - "Garden Hose"
- Technology Synopsis: This patent refines the expandable hose invention, claiming a structure where a flow restrictor creates backpressure to expand an elastic inner tube, which is constrained by a non-elastic outer tube. It specifies particular dimensions, such as an outer tube thickness of about 0.5 mm and an expanded diameter of about 20 mm. (’272 Patent, Abstract; Claim 2, 3).
- Asserted Claims: "one or more claims" (Compl. ¶90).
- Accused Features: The "Flex-Able Hose" products, with specific mention of the "Flex-Able Bungee Hose." (Compl. ¶27).
U.S. Design Patent D722,681 - "Expandable Hose"
- Technology Synopsis: This patent claims the ornamental design for an expandable hose. The claimed design consists of the visual appearance of the hose in its contracted state, characterized by the bunched, fabric-like texture of the outer layer, in combination with the specific ornamental features of the end couplers. (’681 Patent, Figs. 1-7).
- Asserted Claims: The single claim for the ornamental design shown.
- Accused Features: The ornamental appearance of the "Flex-Able Hose" products. (Compl. ¶134).
U.S. Design Patent D724,186 - "Expandable Hose Assembly"
- Technology Synopsis: This patent claims the ornamental design for an expandable hose assembly. The design focuses on the visual characteristics of the hose, including the gathered or coiled appearance of the outer fabric layer in its contracted state and the specific design of the couplers. (’186 Patent, Figs. 1-9).
- Asserted Claims: The single claim for the ornamental design shown.
- Accused Features: The ornamental appearance of the "Flex-Able Hose" products. (Compl. ¶156).
III. The Accused Instrumentality
Product Identification
- Defendants' "Flex-Able Hose" brand of products, including the "Flex-Able Hose," "Tough Grade Flex-Able Hose," "Extreme Flex-Able Hose," and "Flex-Able Bungee Hose" (Compl. ¶2, ¶24, ¶26, ¶27). The complaint also names the "EZ-Jet" pressure washer, which allegedly incorporates an infringing hose (Compl. ¶25).
Functionality and Market Context
- The complaint alleges the accused products are expandable garden hoses that are "highly similar" to Plaintiff's "Pocket Hose" products (Compl. ¶24). A screenshot from the Lowe's retail website describes an accused product as a "Kink Free, Expandable, Heavy Duty, Green Garden Hose" that "Expands to 50 Feet with water flow" (Compl. ¶43.i). Screenshots from Defendants' and retailers' websites depict hoses with a gathered, fabric-like outer sheath and standard couplers, sold through direct-to-consumer channels and major retailers like Lowe's, Amazon, and Walmart (Compl. ¶42, ¶43, ¶44). A screenshot from the Trend Makers website shows a menu of various "Flex-Able Hose" products, demonstrating the breadth of the accused product line (Compl. ¶44).
IV. Analysis of Infringement Allegations
'941 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a flexible elongated outer tube constructed from a fabric material | The accused products are depicted with a gathered, fabric-like outer layer. | ¶42, ¶43 | col. 7:38-48 |
| a flexible elongated inner tube ... formed of an elastic material | The accused products are marketed as being "expandable," which the complaint alleges is achieved through an elastic inner tube embodying the invention. | ¶24, ¶43.i, ¶46 | col. 7:27-37 |
| 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 with the inner and outer tubes unsecured to each other between first and second ends | The accused products are shown with couplers at each end. The complaint alleges the products embody the patented invention, which requires the unsecured, two-layer construction. | ¶42, ¶43, ¶46 | col. 7:8-14 |
| said second coupler coupling said hose to a fluid flow restrictor, whereby said fluid flow restrictor creates an increase in fluid pressure ... [which] expands said elongated inner tube longitudinally | The accused products are marketed as expanding with water flow. The complaint alleges Defendants redesigned features related to the "flow restrictor" in some accused products. | ¶25, ¶43.i | col. 13:58-col. 14:4 |
- Identified Points of Contention:
- Structural Questions: A primary factual question is whether the accused products are constructed with an inner tube and outer tube that are "unsecured to each other between first and second ends" as required by the claim. The complaint does not provide direct evidence (such as a product cutaway), so this will likely require discovery and expert analysis.
- Scope Questions: The claim requires coupling to a "fluid flow restrictor." This raises the question of whether this limitation is met if a consumer attaches a standard third-party nozzle, or if the "hose" as sold by the Defendants must include such a restrictor.
'942 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| an outer tube assembly formed from a soft non-elastic based control material | The accused products are shown with a fabric-like outer sheath that appears to function as the "control material" to limit expansion. | ¶42, ¶43 | col. 10:55-65 |
| said outer tube assembly and said inner tube member have a substantially shortened first length in a non-fluid flow contracted state with said outer tube assembly extending about an outer surface... in a undulating state | A screenshot from Tristar's website shows the "Flex-Able Bungee Hose" in its packaging, illustrating the product's gathered, folded, or "undulating" outer layer in its contracted state. | ¶42 | col. 3:39-43 |
| and a substantially longer second length with said outer tube assembly capturing said inner tube member in an expanded state upon the application of fluid pressure | Marketing for the accused products states that they expand significantly with water flow, consistent with the claimed "expanded state." | ¶43.i | col. 3:39-43 |
- Identified Points of Contention:
- Technical Questions: The infringement analysis may turn on whether the visual appearance of the accused products in their contracted state meets the definition of an "undulating state." The provided images show a gathered or bunched texture, and a court will have to determine if this matches the claimed term as understood in light of the patent's specification and figures.
V. Key Claim Terms for Construction
The Term: "unsecured to each other between first and second ends" ('941 Patent, Claim 1)
Context and Importance: This term is central to the claimed structure, distinguishing it from hoses with bonded or laminated layers. The infringement case for the utility patents hinges on whether the accused products meet this negative limitation.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party might argue the term allows for incidental or intermittent contact between the layers, as long as they are not formally bonded or attached in a way that prevents relative movement.
- Evidence for a Narrower Interpretation: The specification repeatedly states the outer tube is "unattached, unconnected, unbonded, and unsecured" and "is able to move freely with respect to the inner tube." (’941 Patent, col. 7:9-14). This language may support a strict interpretation requiring complete and intentional separation along the entire length between the couplers.
The Term: "fluid flow restrictor" ('941 Patent, Claim 1)
Context and Importance: The claim requires this element to generate the backpressure that causes the hose to expand. Practitioners may focus on this term because its definition will determine whether infringement can occur through the normal, intended use of the product with a standard spray nozzle, or if the product as sold must contain the restrictor.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification notes that "A nozzle or other fluid distributor is secured to male coupler 16". (’941 Patent, col. 9:11-12). This may suggest that an attachable, and potentially third-party, component is contemplated as the restrictor.
- Evidence for a Narrower Interpretation: The claim language recites "A hose comprising: ... a fluid flow restrictor," which may imply the restrictor must be a component of the claimed hose itself. Furthermore, the patent was corrected to show a flow restrictor (37) located inside the male coupler, which could support an argument that the restrictor must be integral to the hose assembly. (’941 Patent, Fig. 7 and Certificate of Correction).
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement. Inducement is based on allegations that Defendants encourage infringement by end-users and retailers through marketing and instructions (Compl. ¶50-54). Contributory infringement is based on the allegation that the accused hoses are not staple articles of commerce and are especially made and adapted for infringing use (Compl. ¶63-64).
- Willful Infringement: Willfulness is alleged for all asserted patents. The complaint bases this on Defendants' alleged "actual knowledge" of the patents and the infringing nature of their products, stemming from a long history of litigation between the parties (Compl. ¶41, ¶55). The complaint also points to Defendants' alleged marking of products with a patent ('076 Patent) whose claims were copied from the '941 Patent and later found invalid, arguing this constitutes an "extrajudicial admission" of infringement and demonstrates willfulness (Compl. ¶31).
VII. Analyst’s Conclusion: Key Questions for the Case
- Structural Identity: A dispositive factual question will be one of structural identity: do the accused "Flex-Able Hose" products contain an elastic inner tube that is truly "unsecured" from the non-elastic outer tube between the end couplers, as required by the core claims? The resolution will likely depend on evidence from product teardowns and competing expert testimony.
- Claim Scope: The case will involve a key question of claim scope: can the term "fluid flow restrictor," an element of the claimed hose, be satisfied by a consumer attaching a separate, conventional spray nozzle, or must the hose as sold by Defendants include an integral component that performs this function? The answer will significantly impact the infringement analysis.
- Culpability: Given the extensive litigation history and allegations of claim copying, a central issue will be culpability: if infringement is found, did Defendants act willfully? The court's analysis will likely focus on the scope of any prior license agreements and the evidence surrounding Defendants' knowledge of the patents-in-suit.