DCT

1:23-cv-00115

Teknor Apex Co v. Orbit Irrigation Products LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:23-cv-00115, D.R.I., 03/22/2023
  • Venue Allegations: Venue is alleged to be proper in the District of Rhode Island because Defendant Orbit has committed acts of infringement, conducts regular business, and sells accused products in the district. Plaintiff Teknor Apex also has its principal place of business in the district, where it has allegedly suffered harm.
  • Core Dispute: Plaintiff alleges that Defendant’s fabric-jacketed garden hoses infringe patents related to a lightweight, radially-expandable hose construction featuring a welded outer jacket.
  • Technical Context: The technology involves multi-layer garden hoses designed to be lightweight and kink-resistant by using an inner tube that expands with water pressure inside a fixed-length, welded fabric outer jacket.
  • Key Procedural History: The complaint alleges that Plaintiff provided Defendant with notice of the asserted patents and alleged infringement on February 23, 2023, approximately one month prior to filing the lawsuit. The complaint also notes that Defendant’s parent company, Husqvarna, previously consummated a license agreement in 2018 for foreign counterparts to Plaintiff’s patents, which Plaintiff alleges does not authorize the sales of the accused products in the United States.

Case Timeline

Date Event
2015-04-24 Earliest Priority Date for '357 and '254 Patents
2015-12-01 Plaintiff commercializes its zero-G® hose product
2017-11-07 U.S. Patent No. 9,810,357 Issues
2017-11-14 U.S. Patent No. 9,815,254 Issues
2018-01-01 License agreement with Defendant's parent, Husqvarna
2020-01-01 Plaintiff becomes aware of a non-infringing Dupont hose
2023-02-21 Plaintiff becomes aware of accused Dupont™ Kevlar® Hose
2023-02-23 Plaintiff sends notice of infringement to Defendant
2023-02-24 Plaintiff becomes aware of accused FatMax® Exojacket® Hose
2023-03-05 Plaintiff receives and inspects the FatMax® hose
2023-03-22 Complaint Filed

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

U.S. Patent No. 9,810,357 - "Lightweight, High Flow Hose Assembly and Method of Manufacture", Issued Nov. 7, 2017

The Invention Explained

  • Problem Addressed: The patent background identifies two problems: traditional polymeric garden hoses are often "relatively heavy and cumbersome to use and store," while more recent longitudinally expandable hoses can "kink, bulge, fail and/or exhibit leakage" after repeated use (ʼ357 Patent, col. 1:31-52).
  • The Patented Solution: The invention is a two-layer hose assembly. It features an inner tube that expands radially (circumferentially) when filled with water, contained within a fixed-length outer jacket made from a fabric sheet whose sides are welded together. This construction allows for high water flow and compact storage while preventing the longitudinal stretching that can lead to failure modes seen in other expandable hoses (’357 Patent, Abstract; col. 2:1-15). A key aspect is that the inner and outer tubes are not bonded together between the end couplers, allowing the inner tube to expand and contract freely within the protective jacket (ʼ357 Patent, col. 4:25-36).
  • Technical Importance: This design offers a lightweight, durable, and maneuverable alternative to conventional hoses that is also designed to be more robust and reliable than prior art expandable hoses (’357 Patent, col. 1:53-65).

Key Claims at a Glance

  • The complaint asserts independent claims 1 and 17 (Compl. ¶¶39-40).
  • Independent Claim 1 requires:
    • A hose assembly with male and female couplers.
    • An inner tube made of a "thermoplastic material."
    • The inner tube is expandable from a first circumference to a larger, second circumference upon application of fluid pressure.
    • An outer tube covering the inner tube, which has a "weld seam" along its length comprising "melted fabric."
    • The outer tube is "not connected or attached" to the inner tube between the couplers.
  • The complaint reserves the right to assert other claims, including dependent claims (Compl. ¶39).

U.S. Patent No. 9,815,254 - "Lightweight, High Flow Hose Assembly and Method of Manufacture", Issued Nov. 14, 2017

The Invention Explained

  • Problem Addressed: The ʼ254 Patent addresses the same technical problems as the ʼ357 Patent: the weight and bulk of conventional hoses and the durability issues of longitudinally expandable hoses (’254 Patent, col. 1:23-52).
  • The Patented Solution: The solution is structurally identical to that described in the ʼ357 Patent: a radially expandable inner tube within a non-bonded, welded fabric outer jacket of a fixed length (’254 Patent, Abstract; col. 2:1-21). The core innovation of a non-longitudinally expanding, two-layer construction with a welded seam remains the same (’254 Patent, col. 4:47-64).
  • Technical Importance: As with the ʼ357 Patent, this construction provides a garden hose that is lightweight and easy to manage without sacrificing durability or succumbing to the failure modes of other expandable designs (’254 Patent, col. 1:55-65).

Key Claims at a Glance

  • The complaint asserts independent claims 1 and 17 (Compl. ¶¶52-53).
  • Independent Claim 1 requires:
    • A hose assembly with male and female couplers.
    • An inner tube made of an "elastomeric material."
    • The inner tube is expandable from a first circumference to a larger, second circumference upon application of fluid pressure.
    • An outer tube covering the inner tube, which has a "weld seam" along its length comprising "melted fabric."
    • The outer tube is "not connected or attached" to the inner tube between the couplers.
  • The complaint reserves the right to assert other claims, including dependent claims (Compl. ¶52).

III. The Accused Instrumentality

Product Identification

  • The accused products are the Dupont™ Kevlar® Heavy Duty Fabric Garden Hose and the Stanley® FatMax® Exojacket® Fabric Jacketed Hose (Compl. ¶¶21, 28).

Functionality and Market Context

  • The complaint alleges these are lightweight, fabric-jacketed garden hoses sold to consumers through major retailers, including Costco and Amazon (Compl. ¶¶21, 35). A screenshot from a retailer website describes the Dupont™ Kevlar® Hose as having a "Tough Nylon External Jacket Reinforced with Kevlar" and a "Spinning Male Coupling [that] Prevents Kinks" (Compl. p. 7). The complaint alleges that evaluation of the products confirms they have a welded jacket construction similar to Plaintiff's patented technology (Compl. ¶¶23, 29). The complaint provides an image purporting to show the weld seams on both the Dupont™ and Stanley® branded hoses (Compl. p. 13). It further alleges that the inner tube of the Dupont™ hose is made of polyvinyl chloride (PVC) (Compl. ¶44).

IV. Analysis of Infringement Allegations

'357 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A hose assembly, comprising: Both accused products are hose assemblies with inner and outer tubes and typical female and male couplers. ¶39 col. 7:1-8
an inner tube comprising a thermoplastic material, The inner tubes of both hose assemblies are alleged to comprise a thermoplastic material, such as polyvinyl chloride (PVC). ¶39, ¶44 col. 7:50-52
wherein the inner tube is expandable to a larger, second circumference upon application of fluid pressure... Upon application of water pressure, the inner tube of the accused hoses allegedly expands to a larger, second circumference, radially expanding to fill the outer tube. ¶39 col. 4:1-6
an outer tube covering the inner tube, the outer tube having a longitudinal length and a weld seam...the weld seam comprising melted fabric, Both accused hoses allegedly have an outer tube with a weld seam made of melted fabric. The complaint further alleges the outer tubes are made of woven polyester or nylon. ¶39, ¶42 col. 4:56-65
...a male coupler connected to first ends of the inner tube and the outer tube and a female coupler connected to second ends... Both accused hoses are alleged to include a male coupler and a female coupler connected to the respective ends of the inner and outer tubes. ¶39 col. 7:1-8
wherein the outer tube is not connected or attached to the inner tube between the male coupler and the female coupler. Upon evaluation and deconstruction, the outer tube of the accused hoses is alleged to be not connected or attached to the inner tube between the end couplers. ¶39 col. 4:25-36

'254 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A hose assembly, comprising: Both accused products are hose assemblies comprising inner and outer tubes with typical female and male couplers. ¶52 col. 8:44-51
an inner tube comprising an elastomeric material, The inner tubes of both accused hoses are alleged to comprise an elastomeric material or a material with elastomeric properties. ¶52 col. 5:36-41
wherein the inner tube is expandable to a larger, second circumference upon application of fluid pressure... Both accused hoses are alleged to expand radially to a larger circumference when pressurized, filling the outer sheath. ¶52 col. 4:1-3
an outer tube covering the inner tube, the outer tube having a longitudinal length and a weld seam...the weld seam comprising melted fabric, Both accused hoses allegedly have an outer tube with a longitudinal weld seam. Analysis of the FatMax® hose's seam is noted as being in progress. The outer tubes are described as woven polyester or nylon. ¶52 col. 4:50-64
...a male coupler connected to first ends of the inner tube and the outer tube and a female coupler connected to second ends... Both accused hoses allegedly have a male coupler connected to the first ends of the tubes and a female coupler connected to the second ends. ¶52 col. 5:55-63
wherein the outer tube is not connected or attached to the inner tube between the male coupler and the female coupler. Upon evaluation and deconstruction, the outer tube of the accused hoses is alleged to be not connected or attached to the inner tube between the end couplers. ¶52 col. 4:20-30

Identified Points of Contention:

  • Scope Questions: The complaint alleges that the same accused products infringe claims requiring a "thermoplastic material" ('357 patent) and claims requiring an "elastomeric material" ('254 patent). This raises the question of whether the inner tube material of the accused products can be properly characterized as both, or whether the terms, as used in the patents, are intended to be distinct.
  • Technical Questions: A central technical question is whether the seam on the accused hoses is in fact a "weld seam comprising melted fabric" as claimed. The complaint provides a photograph purporting to show such a seam (Compl. p. 13), but the case may require evidence to distinguish this construction from other methods of joining fabric, such as with adhesives or stitching.

V. Key Claim Terms for Construction

  • The Term: "thermoplastic material" (from '357 Patent) and "elastomeric material" (from '254 Patent)

    • Context and Importance: The definition of these terms is critical because they represent the primary distinction between the independent claims of the two asserted patents. Plaintiff alleges the same product infringes both, suggesting an interpretation where a single material (e.g., PVC as alleged in Compl. ¶44) can meet both definitions. Practitioners may focus on whether the patentee intended these terms to be mutually exclusive or overlapping.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader/Overlapping Interpretation: The '254 patent discusses "thermoplastic elastomers including thermoplastic vulcanizates" and styrenic block copolymers like SEBS, which are materials that bridge the properties of thermoplastics and elastomers ('254 Patent, col. 5:39-43). A party could argue these disclosures suggest the patentee contemplated materials with hybrid properties.
      • Evidence for a Narrower/Distinct Interpretation: The patents consistently use "thermoplastic" and "elastomeric" in separate claims and embodiments. The '357 patent gives polyvinyl chloride (PVC) as an example of a "thermoplastic" (col. 7:51), while the '254 patent provides hardness ranges (e.g., 20 to 60 Shore A) typical of classic elastomers ('254 Patent, col. 5:43-46). A party could argue this separation demonstrates a clear intent to define two distinct and non-interchangeable categories of material.

  • The Term: "weld seam" / "melted fabric"

    • Context and Importance: This limitation distinguishes the patented invention from hoses with jackets that are sewn or braided. Infringement of this element will depend on the physical evidence of how the accused hoses' jackets are constructed.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification describes the process as heating fabric to "melt and bond" the sides together, forming a "spine or weld seam" ('357 Patent, col. 4:56-65). This could be argued to cover any manufacturing process where heat is the primary mechanism for fusing the fabric fibers.
      • Evidence for a Narrower Interpretation: Dependent claim 5 of the '357 patent adds limitations that the weld seam has a specific width (9.5 mm +/- 3.0 mm) and a thickness "at least 50% greater than a thickness of the fabric of the outer tube in a non-weld seam section" ('357 Patent, col. 10:43-49). A party could argue these specific, measurable properties disclosed in the specification and claimed in dependent claims should inform a narrower construction of the term "weld seam."

VI. Other Allegations

  • Indirect Infringement: The complaint alleges that Orbit induced infringement by encouraging its "manufacturers, distributors, resellers and retailers" to make, use, sell, or import the accused products in the United States (Compl. ¶¶38, 51).
  • Willful Infringement: The complaint alleges that Teknor's counsel contacted Orbit on February 23, 2023, providing notice of the asserted patents and the alleged infringement (Compl. ¶24). It is alleged that Orbit continued its infringing conduct after receiving this notice, which may form the basis for a claim of post-notice willfulness. The complaint also alleges Orbit chose to "copy" Teknor's patented features (Compl. ¶31).

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

  • A central issue will be one of claim scope and material science: can the inner tube of the accused products, allegedly made of PVC, be construed to meet both the "thermoplastic material" limitation of the '357 patent and the "elastomeric material" limitation of the '254 patent, or will the technical evidence and claim construction show it satisfies one but not the other?
  • A key evidentiary question will be one of physical construction: what evidence will be presented to prove that the seam on the accused hoses is a "weld seam comprising melted fabric," as required by the claims, rather than a seam created by a different, non-infringing manufacturing process such as advanced stitching or adhesive bonding?