DCT

1:23-cv-00225

Telebrands Corp v. BHSD Trading LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:23-cv-00225, N.D.N.Y., 02/17/2023
  • Venue Allegations: Venue is alleged to be proper in the Northern District of New York because Defendant is incorporated in New York, maintains its principal place of business in the state, and has an address in Troy, New York, which is within the district.
  • Core Dispute: Plaintiff alleges that Defendant’s expandable garden hose products infringe patents related to a dual-layer, automatically expanding and contracting hose design.
  • Technical Context: The technology concerns lightweight, flexible hoses that expand significantly in length under water pressure and contract for compact storage, a product category that has seen significant consumer market penetration.
  • Key Procedural History: The complaint alleges that Defendant had knowledge of the patents-in-suit due to the "massive popularity" of Plaintiff's POCKET HOSE® product and "previous patent litigations regarding family members" of the asserted patents, which may form a basis for the willfulness allegations.

Case Timeline

Date Event
2011-11-04 '272 Patent Priority Date
2011-11-04 '870 Patent Priority Date
2017-02-28 '272 Patent Issue Date
2019-01-08 '870 Patent Issue Date
2023-02-17 Complaint Filing Date

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

U.S. Patent No. 9,581,272 - "Garden Hose" (Issued Feb. 28, 2017)

The Invention Explained

  • Problem Addressed: The patent describes conventional garden hoses as being prone to kinking, difficult to store, and heavy, making them cumbersome for consumers to use and organize ('272 Patent, col. 1:40-67).
  • The Patented Solution: The invention is a lightweight, dual-layer hose assembly. It comprises a flexible, elastic inner tube that expands under water pressure, and a non-elastic outer tube made of a fabric-like material that constrains the inner tube's expansion ('272 Patent, Abstract). A key component is a flow restrictor at the outlet end, which allows pressure to build inside the hose, causing it to elongate. When the water flow is stopped and pressure is released, the elastic inner tube automatically retracts, causing the entire hose to shrink to a fraction of its extended length and the outer tube to become "gathered into a contracted state" for easy storage ('272 Patent, col. 11:15-25).
  • Technical Importance: This design created a hose that is lightweight, contractible, and kink-resistant, addressing common storage and handling challenges associated with traditional garden hoses ('272 Patent, col. 2:3-7).

Key Claims at a Glance

  • The complaint asserts at least independent Claim 1 (Compl. ¶20).
  • The essential elements of Claim 1 include:
    • A flexible elongated outer tube member.
    • A flexible elastic elongated inner tube member made from an elastic material with an elongation ratio between two and six times its contracted length.
    • An inlet coupler secured to a first end of the tubes.
    • An outlet coupler secured to a second end of the tubes.
    • A flow restrictor secured to the outlet coupler.
    • The claim concludes with a functional description of how the flow restrictor creates an increase in water pressure to expand the hose, and how a decrease in pressure causes the hose to contract to a "substantially decreased or relaxed length." ('272 Patent, col. 11:11-25).

U.S. Patent No. 10,174,870 - "Expandable and Contractible Garden Hose" (Issued Jan. 8, 2019)

The Invention Explained

  • Problem Addressed: The patent addresses the same problems of conventional hoses being heavy, bulky, and difficult to manage or store ('870 Patent, col. 1:55-63).
  • The Patented Solution: This patent builds on the dual-layer hose concept but places significant emphasis on the physical relationship between the layers. The invention is a hose with an elastic inner tube and a "separate, distinct outer tube" that is "unattached, unconnected, unbonded, and unsecured to the inner tube along the entire length" between the end couplers ('870 Patent, col. 7:6-14). This construction allows the outer tube to "move freely" with respect to the inner tube. When the inner tube contracts, this free movement permits the outer fabric tube to become "folded, compressed and gathered" evenly along the hose's length, preventing kinking or bunching ('870 Patent, col. 12:7-19). This is illustrated by the contrast between the smooth, taut outer tube in its expanded state (FIG. 5) and the gathered, wrinkled state when contracted (FIG. 6).
  • Technical Importance: The specified unattached construction of the outer layer is presented as the key to enabling reliable, kink-free contraction into a highly compact form for storage ('870 Patent, col. 2:25-30).

Key Claims at a Glance

  • The complaint asserts at least independent Claim 1 (Compl. ¶38).
  • The essential elements of Claim 1 include:
    • A flexible elongated outer tube made from a fabric material, having a "maximal length and a maximal diameter."
    • A flexible elongated inner tube made of an elastic material, having a "relaxed length" that is "substantially less than said outer tube maximal length."
    • A first coupler and a second coupler secured to the respective ends of the tubes.
    • A specific limitation requiring that the inner and outer tubes are unsecured between the couplers so that the "outer tube can move freely along said inner tube."
    • A flow restrictor coupled to the second coupler. ('870 Patent, col. 15:1-20).

III. The Accused Instrumentality

Product Identification

  • The "Joeys Garden Expandable Garden Hose," which is allegedly sold in various sizes including 25, 50, 75, and 100 feet (Compl. ¶18).

Functionality and Market Context

  • The complaint alleges the Accused Products are expandable hoses that embody the inventions protected by the Asserted Patents (Compl. ¶18). To support this, the complaint references visual evidence, including a screenshot from Defendant's website, allegedly promoting the Accused Products (Compl. ¶18, Ex. C). A second screenshot from an Amazon.com product page is also referenced as promoting one of the Accused Products (Compl. ¶18, Ex. D). The complaint alleges that Defendant's sales are "indicative of the ingenuity and popularity of Telebrands' POCKET HOSE® hose" and that the products are sold through various channels, including retailers like Wal-Mart and Amazon.com (Compl. ¶¶ 18, 24, 42).

IV. Analysis of Infringement Allegations

The complaint references preliminary claim charts in Exhibits E and F, but these exhibits were not filed with the complaint. The infringement analysis is therefore based on the narrative allegations in the complaint body.

  • ’272 Patent Infringement Allegations
    • The complaint alleges that the Accused Products directly infringe at least Claim 1 of the ’272 Patent, either literally or under the doctrine of equivalents (Compl. ¶20). It asserts that the Accused Products "include all of the limitations of at least Claim 1" and refers to a preliminary claim chart in the unfiled Exhibit E for detailed support (Compl. ¶21). The infringement theory suggested by the complaint is that the Accused Products are dual-layer expandable hoses that operate in the same manner as claimed: expanding under water pressure generated by a flow restrictor and contracting when that pressure is released (Compl. ¶¶ 18, 20-21).
  • ’870 Patent Infringement Allegations
    • The complaint likewise alleges that the Accused Products directly infringe at least Claim 1 of the ’870 Patent (Compl. ¶38). As with the allegations for the ’272 Patent, the complaint states that the Accused Products meet all limitations of Claim 1 and references an exemplary claim chart in the unfiled Exhibit F (Compl. ¶39). The core of this allegation appears to be that the Accused Products are constructed with an elastic inner tube and a separate, unattached outer fabric sleeve that can move freely between the end fittings, thereby mirroring the key structural limitations of Claim 1 of the ’870 Patent (Compl. ¶¶ 38-39).
  • Identified Points of Contention:
    • Scope Questions: A potential dispute may arise over the definition of broad claim terms. For instance, a question for the court could be whether a standard, user-attached spray nozzle qualifies as the claimed "flow restrictor," or if the term requires a more specific mechanism integrated into the hose coupling itself.
    • Technical Questions: A key technical question for the ’870 Patent infringement analysis will concern the physical behavior of the accused hose. What evidence does the complaint provide that the Accused Product's outer tube is "unattached, unconnected, unbonded, and unsecured" and "can move freely" along the inner tube as required by Claim 1?

V. Key Claim Terms for Construction

  • The Term: "flow restrictor" (from Claim 1 of the '272 Patent and Claim 1 of the '870 Patent).

    • Context and Importance: This element is the lynchpin of the invention's operation, as it generates the internal pressure required for the hose to expand. The scope of this term is critical; a broad definition could encompass any standard nozzle a user might attach, whereas a narrow definition might limit the claim to hoses sold with a specific type of integrated valve. Practitioners may focus on this term because its construction could be dispositive of infringement for any product sold without an included nozzle or valve.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification of the ’272 Patent states that a "flow restrictor" can be a "conventional spray nozzle" ('272 Patent, col. 6:24-25). The ’870 Patent specification similarly notes that a "nozzle or other distributor can be secured to [the] male coupler" and that such nozzles have valves to "permit, limit, and stop the flow of water" ('870 Patent, col. 10:11-19). This language may support an interpretation that includes common, detachable hose accessories.
      • Evidence for a Narrower Interpretation: Embodiments in both patents depict a specific mechanism integrated into the outlet coupler. For example, Figure 10 of the ’272 Patent shows an outlet coupler (16) with an "integrally formed flow restrictor 21" and an on/off ball valve (33) ('272 Patent, col. 6:19-25). This could support an argument that the term is limited to a permanent or semi-permanent component of the hose assembly itself.

  • The Term: "outer tube can move freely along said inner tube" (from Claim 1 of the '870 Patent).

    • Context and Importance: This phrase defines the central structural innovation claimed in the ’870 Patent. The degree of "free movement" required will likely be a central point of contention, as infringement hinges on proving the accused hose possesses this specific dynamic relationship between its layers.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The patent repeatedly describes the outer tube as "unattached, unconnected, unbonded, and unsecured" between the end couplers, which may suggest that any construction lacking intermediate connection points meets the limitation ('870 Patent, col. 7:9-11).
      • Evidence for a Narrower Interpretation: The specification links this free movement to a specific functional outcome: it enables the outer fabric to become "folded, compressed and gathered relatively evenly" upon contraction, which "helps prevent the hose... from kinking" ('870 Patent, col. 12:12-20; col. 13:14-18). A party could argue that "move freely" requires not just a lack of attachment, but the functional ability to achieve this specific, even gathering, raising questions about products that might contract or bunch in a different manner.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges that Defendant induces infringement by providing "instructions and information to its customers and the end users that such Accused Products be used to infringe" the patents, citing marketing materials as evidence (Compl. ¶¶ 27, 45). It further alleges contributory infringement, asserting the Accused Products are especially made for an infringing use and are not staple articles of commerce with substantial non-infringing uses (Compl. ¶¶ 31-32, 49-50).
  • Willful Infringement: Willfulness is alleged based on Defendant’s purported knowledge of the Asserted Patents. The complaint alleges this knowledge arises from the "massive popularity" of Plaintiff's POCKET HOSE® and "previous patent litigations" involving the patent family (Compl. ¶¶ 25, 43). The complaint also asserts that Defendant "should have and likely did review" the patents as part of "customary due diligence" before entering the market, and that Defendant has taken "no steps to remedy any infringement" (Compl. ¶¶ 25, 28, 43, 46).

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

  • A core issue will be one of claim construction: can the term "flow restrictor," as used in the asserted claims, be construed to cover any standard, user-attached spray nozzle, or is its meaning limited to a valve mechanism integrated into the hose's outlet coupling as shown in patent embodiments?
  • A key evidentiary question for the ’870 Patent will be one of technical proof: what evidence will demonstrate that the accused hose’s outer layer "can move freely along" the inner tube in the specific manner required by Claim 1, particularly in achieving the even, "folded, compressed and gathered" state described in the patent?
  • The viability of the willfulness claim may turn on whether Plaintiff can establish that Defendant's alleged awareness of related market products and prior litigation is sufficient to prove the requisite knowledge of infringement, or if these allegations will be considered insufficient to meet the high bar for willfulness prior to discovery.