DCT
4:25-cv-01310
Atrimax Inc v. Hutchinson
Key Events
Amended Complaint
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., 05/30/2025
- Venue Allegations: Plaintiff alleges venue is proper because a substantial part of the events giving rise to the claim occurred in the district, including Defendant's extra-judicial enforcement actions targeting Plaintiff's sales and inventory located within the district.
- Core Dispute: Plaintiff seeks a declaratory judgment that its wood splitter products do not infringe Defendant’s patents and that the patents are invalid, following Defendant’s infringement complaints submitted through Amazon.com’s intellectual property enforcement program.
- Technical Context: The technology concerns upright wood splitters, which provide a safer alternative to traditional axes by fixing an upward-facing blade to a base and using a separate striking tool.
- Key Procedural History: The complaint alleges this lawsuit was precipitated by Defendant submitting infringement complaints to Amazon, leading to the deactivation of Plaintiff’s product listings and destruction of inventory. Plaintiff alleges that after it filed its initial complaint, Defendant submitted a second infringement complaint on a related patent. The complaint further notes that the second patent-in-suit is subject to a terminal disclaimer over the first, suggesting the claims are not patentably distinct.
Case Timeline
| Date | Event |
|---|---|
| 2012-12-21 | Priority Date for '202 and '792 Patents |
| 2013-12-19 | PCT Application Filed |
| 2021-02-02 | U.S. Patent No. 10,906,202 ('202 Patent) Issued |
| 2023-07-18 | U.S. Patent No. 11,701,792 ('792 Patent) Issued |
| 2023-Summer | Plaintiff Atrimax Inc. begins selling Accused Products |
| 2024-10-28 | Defendant submits first infringement complaint to Amazon re: '202 Patent |
| 2025-03-20 | Initial Complaint filed in this action |
| 2025-04-09 | Defendant served with Complaint |
| 2025-05-15 | Defendant submits second infringement complaint to Amazon re: '792 Patent |
| 2025-05-30 | First Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,906,202 - "Splitting Apparatus"
The Invention Explained
- Problem Addressed: The patent background describes conventional wood-splitting tools like axes and mauls as dangerous, particularly for inexperienced users, citing risks of misplaced blows, injury from the tool head hitting the person, and ricochet actions (’202 Patent, col. 1:35-49).
- The Patented Solution: The invention is a stationary apparatus that inverts the traditional process. It features an upward-facing cutting blade fixed within a body, which is surrounded by a "safety means" such as a ring (’202 Patent, col. 3:20-25). A user places a piece of wood inside the ring onto the blade and strikes the top of the wood with a separate blunt object like a mallet, forcing the wood downward onto the blade to split it from the bottom up (’202 Patent, col. 5:62-67; Fig. 2). This configuration is intended to keep the user's hands away from the sharp edge and eliminate the need for a dangerous downward axe swing.
- Technical Importance: The design aims to provide a safer, more stable, and less physically demanding method for splitting wood, particularly kindling, making the task accessible to a wider range of users (’202 Patent, col. 2:39-44).
Key Claims at a Glance
- The complaint focuses on Independent Claim 1.
- Essential elements of Claim 1 include:
- A vertically aligned free standing body.
- At least one vertically oriented elongate supporting device.
- A safety device with a "substantially enclosed outer peripheral edge that is a protective barrier," attached to the top of the supporting device.
- The safety device having a "substantially central aperture" for inserting material.
- A stationary cutting device located within the central area and below the safety device, with an upwardly facing cutting edge.
- At least one "side opening" defined between the safety device, supporting device, and horizontal surface to allow split materials to fall out.
- The outer edge protective barrier configured to limit a user's hand from contacting the cutting edge.
- The complaint does not explicitly reserve the right to assert dependent claims, but this action is for declaratory judgment on all claims.
U.S. Patent No. 11,701,792 - "Splitting Apparatus"
- Technology Synopsis: The ’792 Patent is a divisional of the application that led to the ’202 Patent and describes the same fundamental wood splitting apparatus. The complaint alleges that the primary distinction asserted by the Defendant for patentability is the recitation that "the stationary cutting device [overlaps] an entirety of the diameter of the central aperture" (Compl. ¶107). The patent is subject to a terminal disclaimer over the ’202 Patent, meaning it is not considered patentably distinct (Compl. ¶105).
- Asserted Claims: The complaint seeks declaratory judgment on all claims of the patent (Compl. p. 30).
- Accused Features: The same features of the ATRIUM HOME wood splitters are accused of infringing this patent (Compl. ¶¶115-116).
III. The Accused Instrumentality
Product Identification
Wood splitters sold by Plaintiff Atrimax Inc. under the ATRIUM HOME brand, identified by ASINs B0CZYK5YMP, B0CZYRGZ7C, and B0CZZ1SK31 (Compl. ¶28).
Functionality and Market Context
The Accused Products are upright, freestanding wood splitters featuring a base, support legs, an upward-facing blade, and a solid circular ring at the top (Compl. ¶28, p. 8). A photo provided in the complaint shows a device with a cast-iron appearance, where the support structure and top ring form a single, continuous frame around the central blade (Compl. p. 8). The complaint alleges that Defendant's enforcement actions have interfered with Plaintiff's sales in Texas, where it historically had the most sales and stored inventory (Compl. ¶¶29-30, 36).
IV. Analysis of Infringement Allegations
The complaint seeks a declaratory judgment of non-infringement. The following chart summarizes the patentee's apparent infringement theory, which the plaintiff contests.
U.S. Patent No. 10,906,202 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a safety device having a substantially enclosed outer peripheral edge that is a protective barrier | The solid, circular top ring of the ATRIUM HOME wood splitter. | ¶81, ¶84 | col. 12:57-64 |
| the safety device including a substantially central aperture of the safety device | The central opening at the top of the ATRIUM HOME wood splitter through which wood is inserted. | ¶28 | col. 22:25-29 |
| a stationary cutting device located within the central area of the body and distanced below the safety device | The fixed, upward-facing blade located inside the frame of the ATRIUM HOME splitter. | ¶28 | col. 22:29-31 |
| at least one side opening defined between the safety device, the elongate supporting device, and the horizontal surface to allow one or more portions of the split materials to fall from the central area of the body | The space between the support legs of the ATRIUM HOME wood splitter. | ¶94-95 | col. 22:40-45 |
Identified Points of Contention
- Scope Questions: A central dispute concerns the meaning of "substantially enclosed." The complaint argues the accused product's "completely solid ring" cannot meet this limitation, contending that "substantially" means "largely but not wholly" enclosed and was added during prosecution to overcome prior art with a solid ring (Compl. ¶¶81, 83-84, 91). A side-by-side comparison in the complaint contrasts the accused product's solid ring with the prior art design patent D817,123, which also features a solid ring (Compl. p. 22).
- Technical Questions: The complaint raises the question of whether the spaces between the legs of the accused device constitute the claimed "one side opening." It argues the patent specification and claims describe a specific "access cutout" in the protective barrier itself, as depicted in the patent's Figure 3, which the accused product lacks (Compl. ¶¶93-95). Figure 3 of the '202 patent is reproduced in the complaint to illustrate this alleged "access cutout" (Compl. p. 23).
V. Key Claim Terms for Construction
The Term
"substantially enclosed outer peripheral edge"
Context and Importance
The construction of this term may be dispositive of infringement. Plaintiff argues its product's "completely solid ring" is "wholly enclosed" and therefore cannot be "substantially enclosed," which it contends means something less than complete enclosure (Compl. ¶¶83-84). This suggests the case may turn on whether "substantially enclosed" can read on a fully continuous structure or if prosecution history limits it to a structure with a gap or cutout.
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: A patentee may argue that "substantially" is a broadening term and that a solid ring is the ultimate form of an enclosed protective barrier, fully achieving the stated purpose of preventing a user's hands from contacting the blade (’202 Patent, col. 12:57-64). The specification's general description of the safety means as a "ring (circular) shape" may support this view (’202 Patent, col. 12:65-67).
- Evidence for a Narrower Interpretation: Plaintiff argues the term was added to overcome prior art (U.S. Design Patent No. D817,123) that disclosed a solid ring, creating a potential prosecution history estoppel that limits the claim scope to exclude such structures (Compl. ¶¶86-91). The complaint further points to Figure 3 of the patent, which illustrates a "safety container barrier 13 with an access cutout," as evidence that the claims require a non-continuous barrier (Compl. ¶93).
VI. Other Allegations
The complaint does not contain allegations of direct, indirect, or willful infringement by the Plaintiff. Instead, as a declaratory judgment action, it includes several counts against the Defendant patent holder for alleged improper enforcement activities. These include claims for violation of the Lanham Act, common law unfair competition, and attempted monopolization under the Sherman Act, based on Defendant's allegedly false and misleading infringement assertions to Amazon (Compl. ¶¶122-153). The complaint alleges these actions were taken in bad faith, particularly the second infringement complaint filed after Defendant had knowledge of prior art and non-infringement arguments from the initial lawsuit (Compl. ¶¶124-127, 145-146).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim scope and prosecution history: Does the term "substantially enclosed," as used in the ’202 patent, read on a wholly enclosed solid ring? The resolution will likely depend on the court's analysis of why this language was added during prosecution and whether it created a disclaimer of scope that excludes the prior art design and, by extension, the accused product.
- A second key issue is one of invalidity: Does the 1930 German Patent (DE 507680), which discloses a wood splitter with cross-shaped blades inside a "tubular container," anticipate or render obvious the asserted claims? The plaintiff's invalidity contentions, presented in a detailed claim chart, will require a technical comparison of this prior art against the elements of the patented invention (Compl. pp. 14-18).
- A significant parallel question concerns improper enforcement: Were the defendant's infringement complaints to Amazon, particularly the second complaint filed after litigation began, objectively baseless and made in bad faith, potentially giving rise to liability for unfair competition or antitrust violations?