DCT
4:25-cv-01310
Atrimax Inc v. Hutchinson
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Atrimax Inc. (Canada)
- Defendant: Vaughan John Hutchinson (New Zealand)
- Plaintiff’s Counsel: Dan B Law PLLC
- Case Identification: 4:25-cv-01310, S.D. Tex., 03/20/2025
- Venue Allegations: Plaintiff alleges venue is proper based on the general federal venue statute, asserting that a substantial part of the events giving rise to the claim occurred in the district, the defendant is subject to personal jurisdiction, or the defendant may be found in the district.
- Core Dispute: Plaintiff, a seller of wood splitters, seeks a declaratory judgment that its products do not infringe Defendant’s patent and/or that the patent is invalid, following Defendant’s submission of an infringement complaint to Amazon.com which resulted in the removal of Plaintiff’s product listings.
- Technical Context: The technology concerns mechanical wood splitters that use a stationary, upward-facing blade within a protective ring, a design intended to improve safety over traditional swinging axes.
- Key Procedural History: The central event precipitating this lawsuit is Defendant’s infringement complaint filed with Amazon.com against Plaintiff’s products. Plaintiff alleges this action constitutes extra-judicial enforcement and has resulted in the destruction of its inventory. The complaint also references the prosecution history of the asserted patent, noting that claims to an "enclosed" safety device were rejected by the USPTO, while claims to a "substantially enclosed" device were allowed.
Case Timeline
| Date | Event |
|---|---|
| 2012-12-21 | '202 Patent Earliest Priority Date |
| 2013-12-19 | PCT Application Filed |
| 2021-02-02 | '202 Patent Issued |
| 2023-06-01 | Accused Products First Sold (approx. "summer of 2023") |
| 2024-10-28 | Defendant Submitted Infringement Complaint to Amazon |
| 2025-03-20 | Complaint for Declaratory Judgment Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,906,202 - "Splitting Apparatus," issued February 2, 2021
The Invention Explained
- Problem Addressed: The patent describes traditional wood-splitting tools like axes and mauls as dangerous, especially for inexperienced users, due to the risk of misplaced blows, ricochets, and significant injury. Motorized splitters are described as large, expensive, and not without their own safety risks (’202 Patent, col. 1:33-64).
- The Patented Solution: The invention is a splitting apparatus where the conventional process is inverted. It features a stationary, upward-facing cutting blade fixed to a base. This blade is surrounded by a "safety means," such as a ring, that is elevated by supporting devices. A user places a piece of wood inside the safety ring onto the blade and strikes the top of the wood with a separate "pressure device" like a mallet, splitting the wood from the bottom up. The safety ring is intended to prevent the user's hands from contacting the blade during this process (’202 Patent, Abstract; col. 4:8-21).
- Technical Importance: This design aims to provide a safer and more accessible method for splitting wood, particularly kindling, by eliminating the need for a swinging axe and reducing the force required, making the task feasible for a wider range of users (’202 Patent, col. 2:39-44).
Key Claims at a Glance
- The complaint’s invalidity and non-infringement arguments focus on independent claim 1.
- Essential elements of independent claim 1 include:
- A vertically aligned free standing body with at least one vertically oriented elongate supporting device.
- A safety device with a "substantially enclosed outer peripheral edge that is a protective barrier," which is rigidly supported above a horizontal surface.
- A stationary cutting device located within a central area of the body and positioned below the safety device, with a cutting edge facing upward.
- The apparatus is configured such that material placed on the cutting edge is exposed above the safety device to receive a "downward non-cutting blunt force."
- "at least one side opening defined between the safety device, the elongate supporting device, and the horizontal surface" to allow split materials to fall out.
- The complaint does not explicitly reserve the right to assert dependent claims but seeks a declaration of non-infringement as to the entire patent (’202 Patent, col. 21:10-col. 22:50; Compl. ¶76).
III. The Accused Instrumentality
Product Identification
- The accused products are wood splitters sold by Plaintiff Atrimax Inc. under the "ATRIUM HOME" brand on Amazon.com, identified by ASINs B0CZYK5YMP, B0CZYRGZ7C, and B0CZZ1SK31 (Compl. ¶28).
Functionality and Market Context
- The complaint describes the products as wood splitters. A visual included in the complaint shows a device with a circular base, supporting legs, and an upper ring inside of which an upward-facing blade is visible (Compl. p. 8). The Plaintiff alleges that its products feature a "completely solid ring" and do not have a "side opening" or "cutout," which forms a primary basis for its non-infringement argument (Compl. ¶¶ 61, 72). The complaint notes that Defendant's enforcement actions on Amazon.com led to the deactivation of product pages and destruction of Plaintiff’s inventory, suggesting the products held a market position that Defendant sought to eliminate (Compl. ¶¶ 36, 48).
IV. Analysis of Invalidity Allegations
The complaint does not contain a traditional infringement claim chart. As a declaratory judgment action, its central allegation is one of non-infringement, supported by narrative arguments, and invalidity, supported by a claim chart. The chart below summarizes the complaint's invalidity allegations, which assert that Claim 1 of the '202 patent is anticipated or rendered obvious by German Patent No. DE 507680 (issued 1930).
’202 Patent Invalidity Allegations (based on DE 507680)
| Claim Element (from Independent Claim 1) | Alleged Prior Art Disclosure (DE 507680) | Complaint Citation |
|---|---|---|
| a vertically aligned free standing body, the body including: | The prior art allegedly teaches a wood splitter with blades in a "tubular container [h]," which can be fitted with feet or a frame to be free-standing. | ¶42; p. 10 |
| at least one vertically oriented elongate supporting device having a top end... | The complaint alleges the "tubular container h" of the prior art serves as the supporting device, and that it has a "bearing plate m" at its top end. A figure provided in the complaint shows this bearing plate (m) at the top of the container. | ¶42; p. 10 |
| a safety device having a substantially enclosed outer peripheral edge that is a protective barrier... | The prior art's "tubular container [h]" is alleged to be the safety device, as it "prevents the separated chips from jumping away and protects the blades against damage or careless contact." A top-down view from the complaint shows the circular, enclosing nature of this container. | ¶42; p. 11 |
| the safety device including a substantially central aperture... to accommodate material inserted therethrough... | The complaint alleges the central opening of the prior art's tubular container serves as the aperture for inserting wood onto the cutting edges of knives a and b. | ¶42; p. 12 |
| a stationary cutting device located within the central area of the body and distanced below the safety device... | The prior art allegedly discloses two cross-shaped knives (a, b) located inside the container, below the top opening, upon which wood is placed to be split. | ¶42; p. 13 |
| at least one side opening defined between the safety device, the elongate supporting device, and the horizontal surface... | The complaint alleges that the prior art teaches chips collect below the container and can be transported away, and that the container could be fitted with "sufficiently long feet," which would create an opening between the container and the ground. | ¶42; p. 13 |
- Identified Points of Contention:
- Scope Questions (Non-Infringement): The complaint's non-infringement theory raises the question of whether a "completely solid ring" on the accused product falls within the scope of a "substantially enclosed" safety device, particularly in light of prosecution history where a broader term was rejected (Compl. ¶¶ 55-61).
- Technical Questions (Non-Infringement): The complaint questions whether the accused product, which allegedly lacks a specific cutout, meets the "at least one side opening" limitation required for split wood to exit the apparatus (Compl. ¶¶ 71-72).
- Functional Questions (Invalidity): A key question for the invalidity analysis will be whether the general structure of the 1930 German patent's "tubular container" truly teaches the specific, layered relationship between the "safety device," "elongate supporting device," and "stationary cutting device" as claimed in the '202 patent.
V. Key Claim Terms for Construction
The Term: "substantially enclosed outer peripheral edge"
- Context and Importance: This term is central to the non-infringement dispute. Plaintiff argues its product’s "completely solid ring" cannot be "substantially enclosed," asserting that the term "substantially" implies "largely but not wholly." Practitioners may focus on this term because the complaint ties its meaning directly to the patent's prosecution history, raising the possibility of prosecution history estoppel or disclaimer (Compl. ¶¶ 55-61, 68).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A patentee might argue the term's plain meaning refers to the primary function of creating a barrier around the blade, a function a solid ring performs completely.
- Evidence for a Narrower Interpretation: The complaint alleges the USPTO rejected claims with an "enclosed" safety device and only allowed claims with "substantially enclosed" after the applicant distinguished the invention from prior art with a solid ring (U.S. Design Patent D817,123) (Compl. ¶¶ 56-57, 63-66). Plaintiff points to Figure 3 of the '202 Patent, which depicts a safety barrier with a distinct cutout, as the embodiment this language was intended to capture (Compl. ¶¶ 69-70). The side-by-side comparison of the accused product and the prior art D817,123 patent in the complaint highlights that both have solid rings (Compl. p. 18).
The Term: "at least one side opening"
- Context and Importance: This term is directly linked to the "substantially enclosed" debate. The plaintiff alleges its product lacks this feature entirely (Compl. ¶72). The definition will determine if the spaces between the legs of the accused product can satisfy this limitation.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A patentee could argue the claim language "defined between the safety device, the elongate supporting device, and the horizontal surface" is met by the large, open areas between the product's legs.
- Evidence for a Narrower Interpretation: The claim's purpose for the opening is "to allow one or more portions of the split materials to fall from the central area of the body" (’202 Patent, col. 22:40-44). Plaintiff argues this requires a more specific structure, like the cutout shown in Figure 3, rather than just the empty space inherent in a legged design (Compl. ¶¶ 70-71).
VI. Other Allegations
- Indirect Infringement: The complaint is a declaratory judgment action and does not contain allegations of indirect infringement.
- Willful Infringement: The complaint does not allege willful infringement by the Plaintiff. Instead, it alleges that the Defendant-patentee engaged in "false, wrongful, and/or unlawful enforcement activities" by filing an infringement complaint with Amazon.com (Compl. ¶48). The Plaintiff seeks attorneys' fees under 35 U.S.C. § 285, alleging the case is "exceptional" due to these enforcement actions and the alleged clear invalidity of the asserted patent (Compl. ¶¶ 49, 16.C).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of prosecution history estoppel: Will the patent’s prosecution history, in which the term "enclosed" was allegedly rejected and "substantially enclosed" was adopted to distinguish prior art with a solid ring, now prevent the patentee from asserting that the claim covers the Plaintiff's "completely solid ring" design?
- A second central question is one of invalidity: Does the 1930 German patent, which discloses a wood splitter with cross-shaped knives inside a tubular container, anticipate or render obvious the specific combination of a safety device, elongate supports, and a stationary blade as claimed, or are the structural and functional differences sufficient to maintain patentability?
- Finally, a key issue of claim construction will be whether the "at least one side opening" requires a specific structural cutout in or near the safety barrier for egress of split wood, as Plaintiff argues, or if the inherent space between the legs of the apparatus is sufficient to meet the limitation.