Limited Exclusion Order; ITC Investigation No. 337-TA-448; Certain Oscillating Sprinklers, Sprinkler Components, and Nozzles; Tekni-Plex, Inc.Dear Mr. Budzyn:

HQ 472537 August 29, 2002 ENF-4-02-RR:IT:IP 472537 CK CATEGORY: Unfair Competition Mr. Ludomir A. Budzyn Hoffman & Baron, LLP 1055 Parsippany Blvd. Parsippany, NJ 07054 RE: Limited Exclusion Order; ITC Investigation No. 337-TA-448; Certain Oscillating Sprinklers, Sprinkler Components, and Nozzles; Tekni-Plex, Inc. Dear Mr. Budzyn: This is in reply to your request for a binding ruling on behalf of your client, Tekni-Plex, Inc., dated May 17, 2002. You request a ruling as to whether certain oscillating sprinklers manufactured by Watex, but imported by your client, infringe certain claims of U.S. Patent Nos. 5,511,727 and 5,645,218, which are owned by L.R. Nelson Corp. We have considered the issues raised and our reply follows. FACTS: On March 1, 2002, the U.S. International Trade Commission (ITC) issued a limited exclusion order excluding from entry for consumption into the United States certain oscillating sprinklers manufactured abroad and/or imported by or on behalf of Watex International Co., Ltd., or any of its affiliated companies, parents, subsidiaries, or other related business entities, or their successors or assigns. The order is in effect for the term of the patents, i.e., until July 8, 2014, except under license of the patent owner (Nelson Corp. of Peoria, Illinois) or as provided by law. We note that all allegations related to U.S. Letters Patent 6,036,117 (spray nozzles) were withdrawn. A limited exclusion order was not sought for components of sprinklers. The order is directed to certain oscillating sprinklers manufactured and/or imported by or on behalf of Watex International Co., Ltd. or any of its affiliated companies, parents, subsidiaries, or other related business entities, or their successors or assigns. The order included a copy of the patents (claims 1, 2, 3, 4, 5, or 14 of U.S. Letters Patent 5,511,727 and/or claims 44, 45, 46, 47, 48, 49 of U.S. Letters Patent 5,645,218). Tekni-Plex, Inc. has submitted four models of oscillating sprinklers that it is seeking to import through its Colorite Waterworks and Swan Divisions from Watex International Co., Ltd. The four models are Model 3600 Oscillating Sprinkler (Stock No. OSSP4) (“3600”); Model 3000 Oscillating Sprinkler (Stock No. OSSP5) (“3000”); Model 2800 Oscillating Sprinkler (Stock No. OSSP6) (“2800”); and Model 2600 Oscillating Sprinkler (Stock No. OSSP7) (“2600”). All four models have the same basic construction. Each of the sprinklers includes a base defined by two plastic end supports that are rigidly connected by elongated rods. The elongated rods of the three larger models are metallic, whereas the smallest model (2600) the rods are plastic. A bent metallic spray bar extends between the plastic end supports two, which is mounted a plastic oscillating control mechanism. Nozzles are defined along the length of the spray bar from which water is emitted. With the 2600 and 2800 models the nozzles are merely holes in the spray tube, while with the larger 3000 and 3600 models, the nozzles are brass nozzles that protrude from the spray bar. The spray bar of all four models is hollow. All four models have an oscillation control mechanism that controls the direction of the water flow. Photographs of the four Tekni-Plex oscillating sprinklers, and a portion of the Nelson Corp. oscillating sprinkler appear below.

Model 3600 Model 3000

Model 2600 Model 2000

Nelson Corp. oscillating sprinkler – subject of 337-TA-448 ISSUE: Whether the four models of oscillating sprinklers submitted by Tekni-Plex, Inc. fall within the scope of the ITC’s limited exclusion order issued pursuant to Inv. No. 337-TA-448, such that it is excluded from entry for consumption into the United States. LAW AND ANALYSIS: Section 337 of the Tariff Act of 1930, as amended (19 U.S.C. §1337), prohibits, inter alia, the importation, the sale for importation, or the sale within the United States after importation by the owner, importer, or consignee of articles that infringe a valid and enforceable U.S. patent. 19 U.S.C. §1337(a)(1)(B)(i). The ITC has authority to investigate alleged violations of section 337. If the ITC determines that there has been a violation of section 337, it shall, subject to certain potential exceptions, direct that the articles concerned be excluded from entry into the U.S. and, accordingly, notify the Secretary of the Treasury who shall, through its proper officers, refuse such entry. 19 U.S.C. §1337. See also, 19 C.F.R. §12.39. The ITC order is directed to certain oscillating sprinklers manufactured and/or imported by or on behalf of Watex International Co., Ltd. or any of its affiliated companies, parents, subsidiaries, or other related business entities, or their successors or assigns. The order included a copy of the patents (claims 1, 2, 3, 4, 5, or 14 of U.S. Letters Patent 5,511,727 and/or claims 44, 45, 46, 47, 48, 49 of U.S. Letters Patent 5,645,218). Claims 44-48 of patent ‘218 specifically covers a feature which may be described as: a hollow tubular member and an elongated strip of flexible material positioned within the tubular member, the strip having a number of spaced water stream outlets. It may further be described as: the strip also having pressure responsive surfaces constructed so that when the strip is positioned inside the tubular member, the surfaces of the strip are engaged by the water within tubular spray assembly and by a strip-engaging surface of the tubular member to enhance engagement of the strip with the tubular member.” Claim 49 of the ‘218 patent is directed to a sprinkler assembly which is required to include what may be described as: a manually adjustable control mechanism carried by the housing assembly to control the rate of water under pressure to the sprinkler head assembly in accordance with manual adjustment of the control mechanism. This adjustable control mechanism is one which is capable of controlling water under pressure through the sprinkler for a manually selected predetermined number of oscillatory movements. Claims 1-5 and 14 of the ‘727 patent require the presence of an elongated strip of flexible material having spaced water stream outlets, substantially similar to the claims 44-48 of the ‘218 patent, discussed above. As can been seen from the photographs found in the FACTS portion of the ruling, the four models submitted by Tekni-Plex do not have a flexible strip of material running within the hollow tube from where water is emitted. We note that the Nelson model has an elongated strip of flexible material with a series of longitudinally spaced water stream outlets extending throughout its length. All the Tekni-plex sprinklers at issue have an all metal hollow tube from which water is emitted, therefore, claims 44-48 of patent ‘218 and claims 1-5 and 14 of the ‘727 are not infringed. Claim 49 of the ‘218 patent requires the presence of a mechanism that controls both the flow or rate of water, and the oscillating motion of the sprinkler. As stated in the FACTS portion of this ruling, the four Tekni-Plex sprinklers only have a mechanism that controls the oscillating motion. The Tekni-Plex sprinklers also do not have a mechanism that controls the rate of flow of the water emission. Therefore, the four Tekni-Plex sprinklers do not infringe claim 49 of the ‘218 patent. HOLDING: The four submitted Tekni-Plex oscillating sprinklers are not within the scope of the ITC’s limited exclusion order issued pursuant to Inv. No. 337-TA-448, and as such they are not excluded from entry for consumption into the United States. Sincerely, Joanne Roman Stump, Chief Intellectual Property Rights Branch