DCT
3:19-cv-00642
LSP Products Group Inc v Oatey Co
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: LSP Products Group, Inc. (Delaware)
- Defendant: Oatey Co. (Ohio)
- Plaintiff’s Counsel: Siebman, Forrest, Burg & Smith, L.L.P.; Thomas | Horstemeyer, LLP
- Case Identification: 3:19-cv-00642, N.D. Tex., 06/21/2019
- Venue Allegations: Venue is alleged to be proper in the Northern District of Texas because Defendant Oatey Co. resides in the district, maintains a regular and established place of business there, and has allegedly committed acts of infringement within the district.
- Core Dispute: Plaintiff alleges that Defendant’s Quadtro® washing machine outlet box products infringe a patent related to plumbing connector systems designed for use with cross-linked polyethylene (PEX) pipe.
- Technical Context: The technology concerns recessed in-wall plumbing outlet boxes that provide a standardized and secure connection point for PEX tubing, a flexible plastic pipe that has become a widespread alternative to traditional copper for residential water supply lines.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendant with actual notice of the patent-in-suit via a letter from counsel dated June 7, 2006. The patent expired in 2017, meaning the lawsuit exclusively concerns past monetary damages. The filing is a Second Amended Complaint.
Case Timeline
| Date | Event |
|---|---|
| 1996-04-10 | ’923 Patent Priority Date |
| 1997-04-10 | ’923 Patent Application Filing Date |
| 1999-11-16 | ’923 Patent Issue Date |
| 2006-06-07 | Alleged date of actual notice letter sent to Defendant |
| 2017 | Approximate expiration date of the ’923 Patent |
| 2019-06-21 | Second Amended Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 5,983,923 - Water service box and connectors for PEX pipe
- Patent Identification: U.S. Patent No. 5,983,923 (Water service box and connectors for PEX pipe), issued November 16, 1999. (Compl. ¶4).
The Invention Explained
- Problem Addressed: The patent’s background section notes the increasing use of cross-linked polyethylene (PEX) tubing in potable water systems as a replacement for copper pipe. It observes that existing valves for PEX were typically "stubbed in through the wall," suggesting a need for a more integrated and recessed connection method. (’923 Patent, col. 1:19-27).
- The Patented Solution: The invention is a "plumbing connector system" that combines a recessed in-wall service box with at least one valve and a specialized "valve inlet extension." (’923 Patent, Abstract). This extension is designed to be secured to the box and features a "barbed end" specifically for connecting to a PEX supply line, which is then secured with a crimp ring. (’923 Patent, col. 2:39-48). This creates a self-contained unit for connecting PEX pipes to appliances like washing machines from within a wall cavity.
- Technical Importance: The patented system provided a purpose-built solution for the growing PEX plumbing market, offering a more standardized and protected in-wall connection point compared to simply stubbing pipes through drywall. (Compl. ¶16).
Key Claims at a Glance
- The complaint asserts infringement of claims 1-10 of the ’923 Patent, with independent claim 1 being the primary focus. (Compl. ¶26).
- The essential elements of independent claim 1 include:
- A recessed, in-wall water service box with walls and at least one opening.
- At least one valve operable inside the box.
- A valve inlet extension attached to the valve, extending through the box's opening, and having a barbed end opposite the valve for insertion into a PEX water supply line.
- An apparatus for releasably securing the valve inlet extension to the wall of the service box.
- A ring that can be positioned over the PEX supply line to secure it to the barbed end of the valve inlet extension.
- The complaint does not explicitly reserve the right to assert other claims, but it asserts a range of claims (1-10), which includes all dependent claims. (Compl. ¶26).
III. The Accused Instrumentality
Product Identification
- The accused products are Oatey’s "Quadtro® washing machine outlet box products," with specific mention of Model No. 38528. (Compl. ¶¶8, 22).
Functionality and Market Context
- The accused products are described as outlet boxes designed for "applications that require supply valves and waste drain recessed into the wall." (Compl. ¶24). The complaint alleges they are sold through major nationwide retailers, including Home Depot and Walmart. (Compl. ¶23). A provided image from product advertising shows an installed Quadtro® box with two valves connected to red and blue PEX pipes within a wall frame. (Compl. p. 7). This visual illustrates the product's intended use in a recessed, in-wall PEX plumbing application. (Compl. p. 7).
IV. Analysis of Infringement Allegations
The complaint provides a narrative summary of infringement of claim 1 in lieu of a full claim chart exhibit.
’923 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A recessed, in-wall water service box having top, bottom, back and side walls, and at least one opening through one of the walls that was adapted to receive a valve inlet extension of desired diameter through the opening | The Accused Products included a recessed, in-wall water service box with walls and an opening adapted to receive a valve inlet extension. | ¶33(i) | col. 4:46-51 |
| A valve inlet extension attached to the valve in fluid communication with the valve inlet and extending through the opening in the water service box, the valve inlet extension having a barbed end opposite the valve inlet...being insertable into an open end of a cross-linked polyethylene water supply line | The Accused Products included a valve inlet extension connectable to a PEX water supply line. | ¶33(ii) | col. 4:54-62 |
| Apparatus releasably securing the valve inlet extension to the wall of said water service box having said opening | The Accused Products included an apparatus releasably securing the valve inlet extension to the wall of the water service box. | ¶33(iii) | col. 4:63-65 |
| A ring positionable over and around said end of the cross-linked polyethylene water supply line to secure said end to the barbed end of the valve inlet extension | Oatey allegedly employed the use of, included, or instructed customers to employ a ring for securing a PEX supply line to the barbed end of the valve inlet extension, which was "otherwise not suitable for any substantial non-infringing use." | ¶33(iv) | col. 4:66-5:2 |
- Identified Points of Contention:
- Scope Questions: Claim 1 recites a complete system that includes "a ring" for securing the PEX pipe. The complaint's phrasing that Oatey "employed the use of, and/or the Accused Products included and/or Oatey otherwise instructed... a ring" raises the question of whether Oatey sells the ring with the outlet box. (Compl. ¶33(iv)). If the ring is a separate component sourced by the end-user, the viability of the direct infringement claim may be contested, shifting focus to the indirect infringement allegations.
- Technical Questions: What is the specific "apparatus releasably securing the valve inlet extension" in the accused product? (Compl. ¶33(iii)). The patent discloses a threaded locknut, but the claim language is broader. (’923 Patent, col. 3:34-40). The nature of the accused securing mechanism and whether it falls within the scope of this claim element will be a technical question for the court.
V. Key Claim Terms for Construction
The Term: "apparatus releasably securing the valve inlet extension to the wall of said water service box"
- Context and Importance: This term defines how the valve assembly attaches to the box itself. Practitioners may focus on this term because its scope could determine infringement. If construed narrowly to match the patent's specific example, it may not read on the accused product; if construed broadly, it may be more likely to cover the accused functionality but could raise validity questions.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim uses the general term "apparatus," which is not inherently limiting. The specification also mentions alternative securing means, such as "push-nuts, clips, E-rings, and the like." (’923 Patent, col. 3:39-40).
- Evidence for a Narrower Interpretation: The primary embodiment described and illustrated in the patent for this function is a "threaded locknut (56)." (’923 Patent, col. 3:34-36; Fig. 2). A party could argue that the scope of "apparatus" should be understood in light of this detailed disclosure.
The Term: "a ring"
- Context and Importance: This element is the final piece of the claimed system. Its interpretation is critical for direct infringement. The dispute may turn on whether "a ring" must be a component supplied by the defendant as part of the accused product, or if the claim is met when an end-user adds a third-party ring during installation as instructed by the defendant.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim simply recites "a ring," without specifying its source or type beyond its function. The patent itself mentions both a "metal crimp ring" and a "PEX ring," suggesting the term is not limited to a single structure. (’923 Patent, col. 3:58-64; col. 4:3-5).
- Evidence for a Narrower Interpretation: A defendant could argue that for a direct infringement claim of a system, all claimed components must be attributable to the accused infringer. The patent consistently illustrates the ring as an integral part of the final assembly. (’923 Patent, Figs. 2-3).
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement.
- Inducement is alleged based on Oatey providing instructions, packaging, advertising, and technical support that direct and encourage customers to install and use the Quadtro® products in a manner that infringes claim 1. (Compl. ¶¶28, 38).
- Contributory infringement is alleged on the grounds that the accused products are "especially made for or adapted for use in a manner that infringes" and are not a "staple article or commodity of commerce suitable for substantial non-infringing use." (Compl. ¶¶29, 46-47).
- Willful Infringement: Willfulness is alleged based on Oatey's purported pre-suit knowledge of the ’923 Patent. The complaint states that LSP's counsel sent Oatey a letter providing actual notice of the patent on June 7, 2006, nearly 13 years before the complaint was filed. (Compl. ¶¶25, 35, 37). The infringement is characterized as "deliberate." (Compl. ¶35).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of infringement theory: does the "Quadtro" product, as sold by Oatey, directly infringe the system claim by including all elements, specifically "a ring"? Or will the case depend on a theory of indirect infringement, requiring proof that Oatey knowingly instructed or encouraged its customers to combine the Quadtro box with a separately-sold ring to complete the patented invention?
- A second central question will be one of willfulness and damages. Given the specific allegation of a 2006 notice letter, the court will likely scrutinize Oatey's conduct since that date. The determination of whether the alleged infringement was willful will be critical to the potential for enhanced damages, which is a key component of the relief sought for this expired patent.