On October 3, 2012, Anvil International, LLC (“Anvil”) of Portsmouth, New Hampshire, and Mueller Water Products, Inc. (“Mueller”) of Atlanta, Georgia, filed a complaint against Victaulic Company (“Victaulic”) of Easton, Pennsylvania, in the Northern District of Georgia seeking a declaration that the claims of Victaulic’s U.S. Patent No. 7,086,131 (“the ‘131 patent”) and U.S. Patent No. 7,712,796 (“the ‘796 patent”) are invalid and are not infringed by Anvil or Mueller.

Anvil, a wholly-owned subsidiary of Mueller (which, as we reported here, recently filed an unrelated patent action in this district), claims to be a leading provider of services and products in the water infrastructure industry, including pipe fittings, pipe hangers, and piping support systems.  On September 24, 2012, Anvil unveiled its newest rigid pipe coupling, the “SlideLOK” coupling, at the MINExpo International 2012 trade show in Las Vegas.  According to the complaint, the SlideLOK coupling joins two pipe segments together and forms a water-tight seal at the connection point.  Plaintiffs claim that the coupling features a “patent-pending, pressure-responsive gasket” that alleviates gasket pinching and facilitates slide action.

Victaulic is a competitor in the pipe products field and is the owner of several patents for “grooved and plain-end mechanical pipe joining systems.”  Plaintiffs contend that the ‘131 and ‘796 patents, both titled “Deformable Mechanical Pipe Coupling,” are directed to interconnectable pipe coupling segments for joining facing end portions of pipe elements.  In January 2012, Anvil filed an inter partes reexamination request asking the USPTO to reexamine the only claim of the ‘131 patent.  According to the complaint, the USPTO granted the request and claim 1 of the ‘131 patent currently stands rejected under 35 U.S.C. § 102 and/or § 103 as unpatentable.  In February 2012, Anvil filed another inter partes reexamination request asking the USPTO to reexamine the claims of the ‘796 patent.  The USPTO granted the inter partes request with respect to certain claims but denied the request with respect to others.  Anvil then filed an ex parte reexamination request asking the USPTO to reexamine the claims of the ‘796 patent for which it denied Anvil’s inter partes request.

The complaint alleges that Victaulic representatives approached Anvil’s booth at the MINExpo show and, after inspecting samples of the new SlideLOK coupling, threatened that Anvil “would be prevented from selling the SlideLOK coupling in the near future.”  Victaulic’s representatives took several brochures for the SlideLOK coupling, as well.  The day after the MINExpo show concluded, Anvil received a letter from Victaulic’s outside counsel requesting samples of the SlideLOK coupling for Victaulic’s “evaluation vis-a-vis Victaulic’s patent portfolio.”  The following language from the letter, which is not mentioned in Plaintiffs’ complaint, is worth noting: “We stress that Victaulic is not currently asserting that the SlideLok coupling or use of that coupling infringes any Victaulic patent.”  Nevertheless, Plaintiffs claim that the letter, in conjunction with Victaulic’s representatives’ conduct at the trade show, the patent reexamination proceedings, and Victaulic’s history of aggressive enforcement of its intellectual property rights against Anvil and third parties, made Plaintiffs “reasonably apprehensive that Victaulic will attempt to enforce its patent rights in court against them.”  As such, Plaintiffs ask the court for a declaration under 28 U.S.C. §§ 2201, et seq., that the ‘131 and ‘796 patents are invalid and not infringed by Plaintiffs.

The case is Mueller Water Products, Inc. et al. v. Victaulic Co., No. 1:12-cv-3446-JEC, United States District Court for the Northern District of Georgia, Atlanta Division, and has been assigned to Chief Judge Julie E. Carnes.