DCT
5:10-cv-00012
Rubbermaid Commercial Products LLC v. Waterbury Companies Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Rubbermaid Commercial Products LLC (Delaware) and Microlin, LLC (Utah)
- Defendant: Waterbury Companies, Inc. (Delaware)
- Plaintiff’s Counsel: Lenhart Obenshain PC; Schiff Hardin LLP
- Case Identification: 5:10-cv-00012, W.D. Va., 01/29/2010
- Venue Allegations: Venue is alleged to be proper based on Defendant placing infringing products into the stream of commerce via an established distribution channel with the knowledge that such products are sold in Virginia, causing foreseeable injury to Plaintiffs in the district.
- Core Dispute: Plaintiffs allege that Defendant’s "TimeWick by TimeMist" air freshener products infringe a patent related to devices for the controlled release of volatile substances.
- Technical Context: The technology concerns passive dispensers, such as air fresheners, designed to release a volatile substance (e.g., a fragrance) into the atmosphere at a controlled and constant rate over an extended period.
- Key Procedural History: The complaint states that Microlin, LLC is the assignee and owner of the patent-in-suit, and Rubbermaid Commercial Products LLC is an exclusive licensee with the right to sue. No other procedural history, such as prior litigation or administrative proceedings, is mentioned in the complaint.
Case Timeline
| Date | Event |
|---|---|
| 1997-06-20 | ’163 Patent Priority Date |
| 2002-07-16 | ’163 Patent Issued |
| 2010-01-29 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,419,163 - "Controlled Release of Substances," issued July 16, 2002
The Invention Explained
- Problem Addressed: The patent’s background section identifies a need in the art for substance delivery devices that can provide a more "controlled and constant release of fluids over an extended period of time" than was possible with conventional wick-based or simple gravity-fed membrane systems, which were often inefficient and lacked linearity in their release rates ('163 Patent, col. 1:40-52).
- The Patented Solution: The invention describes a device for controllably releasing a volatile substance, often through a porous plug. A key aspect of the solution is a housing constructed from a material with specific permeability characteristics: it is "substantially permeable to ambient air, yet substantially impermeable to the volatile substance" ('163 Patent, col. 2:15-18). This design allows ambient air to enter the housing, which prevents the formation of a pressure gradient (vacuum) as the substance is dispensed, thereby facilitating a more constant and linear diffusion of the substance out of the device ('163 Patent, col. 5:48-60). Figure 4 illustrates an embodiment where the housing (52) itself possesses these permeability properties ('163 Patent, Fig. 4).
- Technical Importance: This approach sought to improve the performance of passive air fresheners and similar dispensers by linearizing the release rate of the active substance, thereby extending the useful life of the product and providing a more consistent user experience ('163 Patent, col. 1:43-45).
Key Claims at a Glance
- The complaint does not specify which claims are asserted, alleging infringement of "the invention claimed in the '163 Patent" generally (Compl. ¶9). The patent contains one independent claim, Claim 1.
- Independent Claim 1:
- A device for releasing a volatile substance comprising:
- a housing having an interior region, an outer surface, and an opening in at least one end;
- a volatile substance contained within the interior region of the housing;
- means for orienting the device such that gravity forces the volatile substance toward the opening; and
- means for controllably releasing the volatile substance from the housing, where this means includes a "means for enabling and controlling the entrance of ambient atmosphere into the interior region of the housing," which itself comprises at least a portion of the housing being made from a material that is "substantially impermeable to the volatile substance" yet "substantially permeable to the ambient atmosphere."
III. The Accused Instrumentality
Product Identification
- The complaint identifies "TimeWick by TimeMist air freshener products" as the accused instrumentalities (Compl. ¶9).
Functionality and Market Context
- The complaint does not provide any specific details regarding the technical operation, materials of construction, or design of the accused products. It alleges that these products "embody the invention claimed in the '163 Patent" without further elaboration (Compl. ¶9). No allegations regarding the products' specific market position are made, beyond the general assertion that Defendant derives substantial revenue from their sale within the district (Compl. ¶5).
No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint provides only a conclusory allegation of infringement, without mapping specific features of the accused products to the elements of any asserted claim. The following chart is constructed based on the implicit allegation that the accused products meet all limitations of Claim 1.
’163 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a housing having an interior region, an outer surface, and an opening in at least one end | The accused "TimeWick by TimeMist" products are alleged to possess a housing with these features. | ¶9 | col. 4:53-56 |
| a volatile substance contained within the interior region of the housing | The accused products are alleged to contain a volatile substance, such as a fragrance. | ¶9 | col. 4:56-57 |
| means for orienting the device such that gravity forces the volatile substance toward the opening | The accused products are alleged to possess a means for orientation, such as a hook or base. | ¶9 | col. 4:1-5 |
| means for controllably releasing the volatile substance from the housing, the controlled release means includes means for enabling and controlling the entrance of ambient atmosphere into the interior region of the housing, wherein the ambient atmosphere control and enabling means comprises at least a portion of the housing being constructed from a material which is substantially impermeable to the volatile substance within the interior region of the housing yet substantially permeable to the ambient atmosphere. | The accused products are alleged to incorporate this means for controlled release. | ¶9 | col. 10:1-10 |
- Identified Points of Contention:
- Technical Questions: A primary factual question will be whether the accused "TimeWick by TimeMist" products are, in fact, constructed with a housing material that is simultaneously "substantially permeable" to air while being "substantially impermeable" to the volatile substance it contains. The complaint provides no evidence to support this allegation, which describes a specific and non-obvious material property.
- Scope Questions: The infringement analysis will depend heavily on the scope of the "means for controllably releasing" limitation. As a means-plus-function term, its scope is defined by the structures disclosed in the specification (e.g., porous plugs, specific housing materials, gas generating cells) and their legal equivalents. The case may turn on whether the structure used in the accused product is the same as or equivalent to one of those disclosed structures.
V. Key Claim Terms for Construction
The Term: "means for controllably releasing the volatile substance from the housing"
Context and Importance: This term, recited in means-plus-function format, is the central functional element of Claim 1. Practitioners may focus on this term because its scope is not limitless but is tied to the specific "corresponding structures" described in the patent's specification. The claim itself further defines this means as including a housing with specific permeability characteristics, creating a complex construction issue.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party might argue that the term covers any of the multiple distinct release mechanisms disclosed, including a simple porous plug (col. 4:62-65), a heating element (col. 9:15-19), or a gas generating cell (col. 8:49-61), suggesting the inventor contemplated a range of structures to perform the function.
- Evidence for a Narrower Interpretation: A party could argue that for Claim 1, the "corresponding structure" is explicitly defined by the claim language itself: a housing material that is permeable to air but impermeable to the substance ('163 Patent, col. 10:1-10). This would significantly narrow the scope to only devices utilizing this specific material science approach, as opposed to other release mechanisms mentioned elsewhere in the specification.
The Term: "substantially permeable to the ambient atmosphere" and "substantially impermeable to the volatile substance"
Context and Importance: These are terms of degree whose definitions are critical for determining infringement. The entire inventive concept described in Claim 1 hinges on a material possessing this dual characteristic. Whether the accused product's housing material falls within the scope of these terms will be a dispositive issue.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification lists common plastics like "polypropylene, high density polyethylene, and polyethylene" as potential materials ('163 Patent, col. 2:22-23). An argument could be made that the term should be construed broadly to encompass such widely used materials when they are employed to achieve the stated function.
- Evidence for a Narrower Interpretation: The patent provides a specific technical reason for this property—to allow air to enter to "prevent a pressure gradient" while preventing the substance from leaking out through the housing walls ('163 Patent, col. 5:54-60). A party could argue the terms should be limited to materials that demonstrably achieve this specific technical effect. The specification also discloses a porosity of "less than about 6 microns" for certain embodiments, which might be argued as a defining, quantitative limit for what is "substantially permeable" ('163 Patent, col. 5:28-29).
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement by "taking active steps" such as "contracting for the distribution of the infringing products" with knowledge of infringement (Compl. ¶10). It also alleges contributory infringement by selling or importing components that are a material part of the invention, not staple articles of commerce, and are especially adapted for infringing use (Compl. ¶11). The complaint does not provide specific factual support for these allegations, such as identifying specific non-staple components or referencing instructional materials.
- Willful Infringement: The complaint alleges that Defendant "is aware of the existence of the '163 Patent" and that its infringement is willful (Compl. ¶12). No facts are alleged regarding the basis or timing of this alleged knowledge.
VII. Analyst’s Conclusion: Key Questions for the Case
- A key evidentiary question will be one of technical fact: Does the accused "TimeWick by TimeMist" product actually employ a housing constructed from a material that is, as Claim 1 requires, "substantially permeable to the ambient atmosphere" yet "substantially impermeable to the volatile substance"? The resolution of this factual question is fundamental to the direct infringement analysis.
- A central legal issue will be one of claim construction: How will the court define the "means for controllably releasing" the substance? The case may turn on whether the scope of this limitation is defined narrowly by the specific air-permeable housing material recited in Claim 1, or more broadly to encompass other release mechanisms described in the patent.
- A related question of definitional scope will be the construction of the terms of degree "substantially permeable" and "substantially impermeable." The outcome will likely depend on whether the court adopts a qualitative, functional definition or a narrower, quantitative one potentially tied to specific performance metrics or material properties disclosed in the specification.