DCT

3:25-cv-00960

Victaulic Co v. Zurn Water LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 3:25-cv-00960, N.D. Tex., 04/16/2025
  • Venue Allegations: Venue is alleged based on Defendant being organized under Texas law and having its registered agent within the district, as well as conducting business and committing alleged acts of infringement in the district.
  • Core Dispute: Plaintiff alleges that Defendant’s mechanical pipe couplings infringe three patents related to pre-assembled coupling systems that simplify installation.
  • Technical Context: The technology concerns mechanical couplings used to join pipe elements end-to-end in industrial plumbing and fire protection systems, where installation efficiency is a significant factor.
  • Key Procedural History: Two of the patents-in-suit have been subject to Inter Partes Review (IPR) proceedings. The '799 Patent was challenged in two IPR petitions that the Patent Trial and Appeal Board (PTAB) declined to institute. The '165 Patent underwent an IPR that resulted in the cancellation of several claims, but the two claims asserted in this litigation (claims 7 and 15) were found to be patentable over the challenge.

Case Timeline

Date Event
2004-05-14 Earliest Priority Date for '165, '799, and '310 Patents
2014-02-11 U.S. Patent No. 8,646,165 Issues
2014-05-27 U.S. Patent No. 8,733,799 Issues
2015-12-12 IPR Petitions filed against '165 Patent
2016-XX-XX IPR Petitions filed against '799 Patent (IPR2016-00276/0277)
2017-08-08 U.S. Patent No. 9,726,310 Issues
2019-10-11 '165 Patent IPR Certificate Issued, confirming patentability of claims 7 and 15
2025-02-10 Plaintiff sends first notice letter to Defendant
2025-03-28 Plaintiff sends second notice letter with infringement claim charts to Defendant
2025-04-16 Complaint Filing Date

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

U.S. Patent No. 8,733,799 - "Combination Sealing Member and Pipe Couplings"

  • Issued: May 27, 2014

The Invention Explained

  • Problem Addressed: The patent describes the installation of prior art mechanical pipe couplings as a "tedious and time consuming" process that requires the technician to handle at least seven individual parts, completely disassemble the coupling, lubricate and stretch a stiff seal over the pipe ends, and then reassemble the entire coupling piece-by-piece. ('799 Patent, col. 1:56-61; col. 2:9-20).
  • The Patented Solution: The invention is a combination of a pipe coupling and a specifically designed sealing member. The sealing member is a flexible ring with an outer surface sized to support the coupling's segments in a pre-assembled state. This configuration holds the segments in a spaced-apart relation sufficient to allow pipe elements to be inserted directly into the coupling without prior disassembly, after which the segments are tightened. ('799 Patent, Abstract; col. 2:21-38).
  • Technical Importance: This "pre-assembled" design streamlines the installation process, aiming to save significant time and effort in construction and industrial settings. ('799 Patent, col. 2:13-20).

Key Claims at a Glance

  • The complaint asserts independent claim 1 and dependent claims 2-4, 6, 12, and 17. (Compl. ¶26).
  • Independent Claim 1 requires, among other elements:
    • A combination of pipe elements, a sealing member, and a coupling with multiple segments.
    • The sealing member is a flexible, resilient ring positioned between the segments.
    • The ring has an "outer surface having a diameter for supporting said segments in a preassembled state."
    • This support is sufficient to allow pipe elements to be "axially inserted therebetween" without disassembly.
    • A final step where the segments are tightened to engage the pipe elements. ('799 Patent, col. 5:50 - col. 6:20).

U.S. Patent No. 9,726,310 - "Combination Sealing Member and Pipe Couplings"

  • Issued: August 8, 2017

The Invention Explained

  • Problem Addressed: Like its parent '799 Patent, this patent addresses the inefficiency of installing traditional, multi-part mechanical pipe couplings that must be fully disassembled and reassembled on site. ('310 Patent, col. 2:14-20).
  • The Patented Solution: The invention is also a pre-assembled coupling system. The claims of this patent are focused on a combination for joining pipe elements that have circumferential grooves. The coupling segments have "arcuate projections" with surfaces designed to engage the "floor" of the pipe grooves, providing mechanical restraint. The system includes a seal sized to support the segments in a spaced-apart configuration that provides clearance for the grooved pipes to be inserted without disassembly. ('310 Patent, Abstract; col. 5:61 - col. 6:21).
  • Technical Importance: The invention aims to provide the installation efficiency of a pre-assembled coupling combined with the strong mechanical engagement characteristic of grooved pipe systems. ('310 Patent, col. 1:33-41).

Key Claims at a Glance

  • The complaint asserts independent claim 1 and dependent claims 2, 4, 6, 7, and 9. (Compl. ¶36).
  • Independent Claim 1 requires, among other elements:
    • A combination including pipe elements with "circumferential grooves at opposite ends, each of said grooves having a floor."
    • A coupling with segments having "a pair of arcuate projections."
    • An "arcuate surface positioned on each of said projections," with the surface being "engageable with said floor of said groove."
    • A seal with an outer surface "sized to support said segments in spaced apart relation to provide clearance... sufficient to permit insertion of said pipe elements." ('310 Patent, col. 5:61 - col. 6:33).

U.S. Patent No. 8,646,165 - "Method of Securing Pipe Elements End to End"

  • Issued: February 11, 2014

The Invention Explained

This patent claims a method for joining pipe elements. The described method avoids the disassembly of the coupling by using a pre-assembled unit. The core steps include: (a) supporting coupling segments in a spaced relation sufficient to permit pipe insertion, (b) axially inserting the pipe ends into the pre-assembled coupling, and then (c) drawing the segments toward one another to engage the pipe surfaces. ('165 Patent, Abstract; col. 2:22-37).

Key Claims at a Glance

  • Asserted Claims: Claims 7 and 15. (Compl. ¶46). The complaint notes that these claims were found novel and nonobvious in an IPR proceeding that cancelled numerous other claims, including the independent claims from which claims 7 and 15 originally depended. (Compl. ¶18). This procedural history suggests the asserted claims will be construed as incorporating the limitations of their cancelled base claims.
  • Accused Features: The complaint alleges that Defendant's sale of and instructions for the Accused Products induces and contributes to infringement of the claimed method by end-users. (Compl. ¶¶48-50).

III. The Accused Instrumentality

Product Identification

The complaint identifies "all sizes of products sold as Model FP23EZ1 and any other models covered by at least one claim" as the "Accused Products." (Compl. ¶20).

Functionality and Market Context

The Accused Products are identified as "Single Bolt Couplings" used in applications such as fire protection systems. (Compl. ¶28, Exhibit G). The complaint alleges these products are used to connect pipe elements end-to-end. (Compl. ¶28). Marketing materials cited in the complaint suggest these are mechanical couplings for grooved pipe. (Compl. ¶20). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint references, but does not include, claim chart exhibits detailing its infringement theories (Compl. ¶¶27, 37). Therefore, a prose summary of the allegations is provided.

'799 Patent Infringement Allegations

The complaint alleges that the Zurn FP23EZ1 coupling, when combined with pipe elements by an end-user, infringes claim 1 of the '799 Patent. (Compl. ¶26). The infringement theory appears to be that the Accused Product is a pre-assembled unit comprising segments and a seal, and that the seal is structured to hold the segments in a spaced-apart manner. This configuration allegedly allows a user to insert pipe ends without first disassembling the coupling, thereby practicing the key aspects of the claimed combination. (Compl. ¶¶28-29).

  • Identified Points of Contention:
    • Scope Questions: A likely point of dispute is whether the seal in the Zurn product performs the function of "supporting said segments in a preassembled state" in the manner required by the claim. The defense may argue that its seal is merely captured between the segments rather than providing the specific structural support to maintain the "spaced apart relation" for insertion as taught in the patent.
    • Technical Questions: The factual evidence will likely focus on the precise dimensions and material properties of the accused seal and coupling segments to determine if they create the claimed "preassembled state" that facilitates insertion without disassembly.

'310 Patent Infringement Allegations

The complaint alleges that the Zurn FP23EZ1, when used with grooved pipe elements, infringes claim 1 of the '310 Patent. (Compl. ¶36). The core of this allegation is that the Accused Product’s segments contain "arcuate surfaces" that are brought into engagement with the "floor" of the grooves on the pipe elements when the coupling is tightened. (Compl. ¶¶38-39). The theory also relies on the coupling being pre-assembled and allowing for insertion of the grooved pipes prior to tightening. (Compl. ¶38).

  • Identified Points of Contention:
    • Scope Questions: The dispute may center on the meaning of "engageable with said floor of said groove." The patent owner may argue for a broad meaning of any contact, while the defendant may argue the term requires a more specific, conforming fit as shown in the patent's embodiments.
    • Technical Questions: A key question will be what evidence demonstrates that the accused coupling's "arcuate projections" make contact with the "floor" of a standard pipe groove, as opposed to only the side walls of the groove, and whether this contact provides the claimed mechanical restraint.

V. Key Claim Terms for Construction

'799 Patent

  • The Term: "supporting said segments in a preassembled state" (from claim 1)
  • Context and Importance: This phrase is central to the invention's purpose of enabling installation without disassembly. The construction of "supporting" will be critical to determining infringement, as it defines the required relationship between the seal and the coupling segments before the pipes are inserted.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The "Summary of the Invention" states the ring has an outer surface "with a diameter sized to support the segments in spaced apart relation sufficient to allow the pipe elements to be inserted." ('799 Patent, col. 2:32-36). This functional language could support an interpretation covering any structure that achieves this result.
    • Evidence for a Narrower Interpretation: Figure 5 shows a specific embodiment where the ring outer surface (26) has a diameter (68) that physically holds segments (52, 54) apart. ('799 Patent, Fig. 5, col. 4:27-33). This could support a narrower construction requiring a specific dimensional and structural interaction, not just a functional outcome.

'310 Patent

  • The Term: "arcuate surface being engageable with said floor of said groove" (from claim 1)
  • Context and Importance: This term defines the mechanical interlock between the coupling and the pipe. Its construction will determine the type and extent of contact required for infringement. Practitioners may focus on this term because the strength of the pipe joint depends on this engagement.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The language itself, "engageable with," may be argued to mean simply capable of making contact with the floor of the groove.
    • Evidence for a Narrower Interpretation: The detailed description explains that upon tightening, the segments "deform" such that the arcuate surfaces "force the arcuate surfaces 66 to engage the pipe elements and conform to its radius of curvature." ('310 Patent, col. 4:29-33). This may support a narrower interpretation requiring a shape-conforming engagement rather than incidental contact.

VI. Other Allegations

Indirect Infringement

The complaint alleges both induced and contributory infringement for all three patents. The factual basis alleged is Defendant's provision of promotional literature, specification sheets, and installation instructions (referenced as Exhibits G-I) that allegedly instruct and encourage customers to use the Accused Products with pipe elements in a manner that directly infringes the patents. (Compl. ¶¶28-30, 38-40, 48-50). It is also alleged there is no substantial non-infringing use for the Accused Products. (Compl. ¶30).

Willful Infringement

The complaint alleges willful infringement for all three patents. This allegation is based on Defendant's alleged continued infringement after receiving pre-suit notice of the patents and the infringement allegations on February 10, 2025, and again via claim charts on March 28, 2025. (Compl. ¶¶22, 24, 34, 44, 54).

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

  • A core issue will be one of functional equivalence: Does the accused Zurn coupling achieve its pre-assembled, easy-to-install functionality through the same technical means claimed in the patents? Specifically, does its seal "support" the segments ('799 Patent) and do its projections "engage" the groove floor ('310 Patent) in the manner required by a proper construction of the claims?
  • A second central question will be the impact of the IPR history. For the '799 Patent, Plaintiff will likely argue the PTAB’s refusal to institute review is evidence of the patent’s strength. For the '165 Patent, the fact that the two asserted method claims were affirmatively found patentable in a concluded IPR will present a significant hurdle for any invalidity defense, likely focusing the dispute for that patent squarely on infringement.
  • Finally, the case presents a question of proving infringing acts. While infringement of the apparatus claims ('799, '310) can be assessed by analyzing the accused product's structure, proving infringement of the method claims ('165) will require evidence of how Defendant's customers actually use the products, and that Defendant's actions induced those specific uses.