Uponor AB, a subsidiary of Uponor Corp. and an affiliate of Uponor North America, announced on March 18 that it has secured a favorable ruling from the Federal Court of Canada regarding its patent infringement case against Heatlink Group and PexCor Mfg. Heatlink and PexCor are affiliated companies based in Calgary, Alberta that manufacture and sell PEX (crosslinked polyethylene) pipe. As a result of the ruling, Heatlink, PexCor and any subsidiaries, partners, employees, licensees, assignsand agents must halt production, offering to sell,and sale of infringingPEX products, and will be ordered to pay yet-to-be-determined damages and costs.
Uponor AB filed suit against Heatlink and PexCor in 2011 in both the United States and Canada alleging that the companies infringedclaims ina key Uponor patent relating to the manufacture of PEX pipe. In January 2016, the suit went to trial in Calgary, Alberta, and on March 16, 2016, Justice Manson ruledin favor of Uponor AB. The action in the United States was previously stayed, pending the outcome of the Canadian litigation.
Judge Manson’s ruling found that:
• Five claims of the ‘376 Patent are valid and infringed by PexCor and Heatlink.
• PexCor and Heatlink (and any subsidiary and affiliated companies, franchisees, officers, directors, employees, agents, licensees, successors, assigns and any other over whom they have control) are enjoined from manufacturing, using, offering for sale and/or selling to others for their use the apparatus for heating polymer material that infringes the ‘376 patent and the PEX pipe made therefrom until expiry of the ‘376 patent.
• Uponor AB is entitled to damages as a result of PexCor’s and Heatlink’s infringement of claims 16, 17, 25, 26 and 27 of the ‘376 patent.
• Uponor AB is entitled to pre-judgment interest on the award of damages for each year since the infringing activity began, defined as the date of PexCor’s first commercially successful manufacturing of the infringing activity.
• Uponor AB is entitled to post-judgment interest.
• Uponor AB is entitled to costs.
“We’re pleased that the Federal Court of Canadadeemed these claims to be valid and appreciate the considerable amount of time and effort the Court expended to arrive at its ruling,” said Bill Gray, president, Uponor North America.
Legal counsel for HeatLink believe several errors were made in Justice Manson’s March 16, 2016 Federal Court of Canada ruling in Uponor’s patent infringement case, and have lodged an appeal of the decision. Twenty five of the thirty claims of the Uponor patent asserted by Uponor were found to be invalid with the five claims that were considered valid focused on the travel of the pipe through the crosslinking zone. These claims do not relate to the quality of the pipe produced.
The evidence presented at trial demonstrated that no Uponor company in North America neither uses the process covered by the 376 patent, nor sells any PEX pipe in North America made by the process. HeatLink’s innovative product engineering team developed their own infrared technology process in 2002 and have been manufacturing PEX pipe since then for a broad range of plumbing and heating customers across North America.
In compliance with the ruling HeatLink has halted the manufacture and sale of the products affected by the Canadian court’s judgement, but is conducting business as usual throughout North America with the continuing sales of other HeatLink products.
“We are a family-owned and -managed company and we care deeply about our customers and staff,” said Manfred Schmidt, CEO of HeatLink. “Our focus is on meeting the needs of our customers and ensuring they are able to run their businesses effectively. We believe the matter will be resolved in our favour on appeal, and have asked that the appeal be heard in June of 2016.”
