DCT
2:13-cv-01321
Pentair Water Pool Spa Inc v. Fail Safe LLC
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Pentair Water Pool and Spa, Inc. (Delaware)
- Defendant: Fail-Safe, LLC (Colorado)
- Plaintiff’s Counsel: Quarles & Brady LLP
- Case Identification: 2:13-cv-01321, E.D. Wis., 11/22/2013
- Venue Allegations: Venue is alleged based on Defendant’s business contacts and prior litigation within the district, as well as Plaintiff's sales of the accused products in Wisconsin.
- Core Dispute: Plaintiff seeks a declaratory judgment that Defendant’s patent, which relates to safety systems for swimming pool pumps, is invalid and unenforceable, following Defendant's accusations of infringement.
- Technical Context: The technology concerns safety vacuum release systems (SVRS) designed to prevent dangerous suction entrapment incidents in swimming pools and spas by shutting down the pump motor.
- Key Procedural History: This action is a complaint for declaratory judgment. The complaint alleges that Defendant engaged in inequitable conduct during the prosecution of the patent-in-suit by submitting a false affidavit to the U.S. Patent and Trademark Office (USPTO). Concurrently with this complaint, Plaintiff filed an Inter Partes Review (IPR) petition challenging the patent. The IPR proceeding ultimately resulted in a certificate issued on December 10, 2014, cancelling all claims (1-10) of the patent-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 2000-12-31 | Fail-Safe allegedly publicizes its SVRS system in a brochure. |
| 2003-04-08 | Fail-Safe allegedly publicizes its SVRS system in an operator's manual. |
| 2004-11-01 | '425 Patent Priority Date (Provisional Application Filing). |
| 2005-11-01 | Inventor submits affidavit to USPTO during prosecution. |
| 2012-10-09 | U.S. Patent No. 8,281,425 issues. |
| 2013-08-08 | Fail-Safe sends letter to Pentair alleging infringement. |
| 2013-10-22 | Fail-Safe sends second letter to Pentair alleging infringement. |
| 2013-11-22 | Complaint for Declaratory Judgment filed. |
| 2013-11-22 | IPR petitions filed by Pentair against the '425 Patent. |
| 2014-12-10 | USPTO issues IPR Certificate cancelling all claims of the '425 Patent. |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,281,425 - "Load Sensor Safety Vacuum Release System"
- Patent Identification: U.S. Patent No. 8,281,425, "Load Sensor Safety Vacuum Release System", issued October 9, 2012.
The Invention Explained
- Problem Addressed: The patent describes the danger of suction entrapment, where a person can become trapped against a swimming pool's water intake drain by the pump's powerful vacuum ('425 Patent, col. 2:32-38). Prior art safety systems often required installing new valves or sensors directly into the pool's plumbing, which could be complex and expensive, particularly when retrofitting older pools ('425 Patent, col. 2:39-43).
- The Patented Solution: The invention proposes using a load-sensor integrated with the pump's electric motor to act as a safety system ('425 Patent, Abstract). Instead of directly measuring water pressure or flow, the system monitors the electrical load on the motor. When an intake is blocked (e.g., by a person), the pump has less water to move, which causes an abrupt decrease in the motor's workload. The patent teaches that this "underload condition" is a reliable indicator of a dangerous suction event ('425 Patent, col. 5:29-38). Upon detecting this specific underload, a switch cuts power to the motor, neutralizing the vacuum and releasing the trapped person ('425 Patent, col. 5:39-45).
- Technical Importance: This method provided a non-invasive safety solution that could be implemented by simply replacing a standard pool pump motor with one containing the integrated load-sensing technology, avoiding costly and difficult plumbing modifications ('425 Patent, col. 4:47-54).
Key Claims at a Glance
- The complaint seeks a declaration that all claims are invalid and unenforceable (Compl., Prayer for Relief ¶A-B). The patent contains two independent claims.
- Independent Claim 1 (Method): A method for releasing a trapped bather that involves:
- circulating water with a pump powered by an electric motor.
- "remotely and indirectly sensing a potential for a dangerously high vacuum level" without directly sensing water flow or pressure.
- "reacting to a loss of flow of water" by powering down the motor to neutralize the vacuum.
- Independent Claim 10 (System): A system comprising:
- a water circulation system with a centrifugal pump and electric motor.
- water intake and return pipes.
- "a motor load-sensor" attached to the motor, which is "disposed away from any direct fluid communication with water flow."
- The load-sensor is configured to "sense a level of load of motor output" and interrupt power if it detects a "decrease in motor load" that indicates a loss of water flow from a blockage.
III. The Accused Instrumentality
Product Identification
- Pentair's SVRS Swimming Pool Pumps, specifically the "IntelliFlo VS+SVRS" and the "IntelliPro VS+SVRS" (Compl. ¶6).
Functionality and Market Context
- The complaint describes the accused products as "variable speed high performance pumps" and "SVRS Swimming Pool Pumps" (Compl. ¶¶ 2, 6). The "SVRS" designation indicates that the products incorporate a Safety Vacuum Release System.
- The complaint does not provide further technical detail on the specific mechanism by which the accused pumps' SVRS functionality operates. It is this functionality that Fail-Safe has accused of infringement (Compl. ¶¶ 6, 20).
IV. Analysis of Infringement Allegations
The complaint is a declaratory judgment action and therefore does not contain affirmative infringement allegations. Instead, it references infringement accusations made by Defendant Fail-Safe (Compl. ¶¶ 20, 22). The following table summarizes the likely infringement theory for the system of claim 10, based on the nature of the dispute.
No probative visual evidence provided in complaint.
'425 Patent Infringement Allegations
| Claim Element (from Independent Claim 10) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a water circulation system including a centrifugal pump for circulating water; an electric motor operably connected to the centrifugal pump... | The accused IntelliFlo and IntelliPro pumps are part of a water circulation system. | ¶6 | col. 8:52-55 |
| a motor load-sensor operably attached to the electric motor, the motor load-sensor being disposed away from any direct fluid communication with water flow to sense a level of load of motor output... | Fail-Safe's accusations imply that the accused "SVRS" pumps contain a component that functions as a motor load-sensor to detect entrapment events without direct contact with water. | ¶¶ 6, 20 | col. 8:56-62 |
| ...and configured to interrupt electrical power to the electric motor if there is a decrease in motor load predetermined to indicate a loss of water flow occurring by the bather being suction entrapped... | The "SVRS" function of the accused pumps, as alleged by Fail-Safe, presumably involves shutting down the motor in response to a blockage, which Fail-Safe's theory alleges is detected as a decrease in motor load. | ¶¶ 6, 20 | col. 8:62-68 |
- Identified Points of Contention:
- Scope Questions: A central question is whether the mechanism within Pentair's SVRS pumps constitutes a "motor load-sensor" as that term is used and described in the patent.
- Technical Questions: The dispute raises the question of how the accused pumps technically operate. Do they detect a "decrease in motor load" by measuring power factor or current as described in the '425 patent's specification, or do they use another parameter, such as a change in motor RPM, to detect a blockage?
V. Key Claim Terms for Construction
The Term: "a motor load-sensor" (Claim 10)
- Context and Importance: The definition of this term is critical. The case may turn on whether the specific hardware and software in Pentair's pumps falls within the scope of this term. Practitioners may focus on this term because the patent specification links "load sensor" functionality to monitoring motor RPM ('425 Patent, col. 5:62-64), which could create ambiguity as to whether a simple RPM monitor is a "load-sensor."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states, "Shaft speed increases as load is reduced. Thus, the load sensor becomes a monitor for motor shaft speed (RPM)" ('425 Patent, col. 5:62-64). This could support an argument that any device monitoring RPM to infer load is a "load-sensor."
- Evidence for a Narrower Interpretation: The detailed description and Figure 2 illustrate a specific electronic circuit for measuring "real power" by multiplying voltage and current signals, suggesting a "load-sensor" is a device that performs this type of power calculation, not merely an RPM monitor ('425 Patent, col. 9:20-33).
The Term: "remotely and indirectly sensing" (Claim 1)
- Context and Importance: This negative limitation is used to distinguish the invention from prior art that directly measures hydraulic properties like pressure. Its construction is important to determine the boundary between the claimed invention and other safety systems.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term is defined by what it is not: it is sensing "without using a sensor to sense either water flow or water pressure characteristics" ('425 Patent, col. 10:56-59). This suggests any sensing method that avoids direct hydraulic measurement could fall within the claim.
- Evidence for a Narrower Interpretation: The specification consistently ties this "indirect" sensing to one specific phenomenon: detecting a motor underload condition ('425 Patent, col. 5:55-64). This could support an argument that the term is limited to sensing motor load and does not cover other potential indirect methods.
VI. Other Allegations
- Indirect Infringement: The complaint, a DJ action, does not detail any allegations of indirect infringement made by Fail-Safe against Pentair.
- Willful Infringement: The complaint does not detail specific allegations of willfulness. However, it does note that Fail-Safe sent letters to Pentair on August 8 and October 22, 2013, notifying Pentair of the alleged infringement (Compl. ¶¶ 19, 21-22). Such letters could form the basis for a claim of post-notice willful infringement.
- Inequitable Conduct: Pentair alleges that the '425 patent is unenforceable due to inequitable conduct (Compl. ¶35). The complaint claims that an inventor submitted a false affidavit to the USPTO during prosecution, which stated that the invention had never been "sold, certified, nor publicized as an SVRS" (Compl. ¶38). Pentair alleges this statement was false, citing a 2000 brochure and a 2003 operator's manual as evidence of prior publicization (Compl. ¶¶ 39-40). The complaint further alleges these false statements were made with an intent to deceive the USPTO and were material to patentability, as they were used to overcome an obviousness rejection (Compl. ¶¶ 41, 43-44).
VII. Analyst’s Conclusion: Key Questions for the Case
The concurrent filing of this lawsuit and an IPR petition, which ultimately succeeded in cancelling all claims, suggests the litigation was a component of a broader invalidation strategy. The key questions that defined this dispute were:
- A primary question was one of patent viability: Would the '425 patent withstand Pentair's challenge that it was unenforceable for inequitable conduct, based on the allegation that the inventor submitted a materially false affidavit to the USPTO to overcome a rejection?
- A related and ultimately dispositive question was one of validity: Would the patent claims survive an invalidity challenge based on prior art, including the alleged public disclosures made by the patentee itself years before the patent application was filed? This question was answered definitively by the IPR, which cancelled all claims.
- A secondary question, now moot, was one of technical infringement: Assuming the patent were valid, does Pentair’s SVRS pump technology operate by using a "motor load-sensor" to detect a "decrease in motor load" as claimed, or does it utilize a distinct, non-infringing technical method?