News Release –Telog Instruments Agrees to Resolution of Infringement Case
December 4, 2015
In July 1998, Loren Worthington conceived an innovative method and system of detecting and recording water hammer events. In subsequent years, Loren and Will Worthington, co-owners of Pipetech International, undertook the long process of introducing that technology into the pipeline industry. The invention is embodied in Pipetech’s TP1 Transient Pressure Monitoring System. . Will Worthington introduced the TP1 to the pipeline industry in a technical paper and oral presentation at the annual Pipeline Conference of the American Society of Civil Engineers in Houston, Texas, in August 2005, and sales began a steady climb.
Loren Worthington sought to protect his invention by pursuing patents concerning it and in May 2007 the United States Patent and Trademark Office issued the first of two U.S. patents regarding the technology. Loren assigned the patents to Pipetech International and the TP1 was marked with both patents following their issuance.
In December 2011 Pipetech International was advised by one of its clients that Telog Instruments, Inc. was marketing a device that appeared to infringe the patents. A product analysis confirmed the Telog LPR 31i did infringe the Pipetech patents, and that it had been in continuous production since September 2007. Will Worthington initiated communication with Telog to resolve the issue, including phone calls, correspondence, and personal visit, without success. On 10/15/2013, Pipetech named Telog and its Scottsdale-based distributor Applied Products Group LLC (“APG”), as defendants in a complaint for patent infringement filed in the U.S. District Court for the District of Arizona.
After months of discovery, depositions, and legal maneuvering, Telog’s case was transferred to the U.S. District Court for the Western District of New York, but the APG case remained in Arizona. The Arizona court refused to let the case die, insisting on a settlement conference in the Arizona courtroom, attended in person by principal attorneys and chief executives from each firm. Prior to the ordered conference, APG agreed to a cash settlement and to complete restraint on sale of the Telog accused products, in return for which Pipetech dismissed the case on 2/18/2015.
The US District Court in New York ordered a mediation conference before proceeding with prosecution of the case against Telog. On 6/2/2015, the principals and attorneys for both Pipetech International and Telog attended the mediation and agreed to a settlement that included cash compensation to Pipetech, as well as a license for Telog to manufacture and sell transient detection devices in the future. At the parties’ request, the Court dismissed the case on 8/6/2015.
Pipetech International President Will Worthington noted his regrets that legal action became necessary, and that it was with considerable trepidation that he committed to the expense of a full-court press against infringers. Yet he hopes others who face a decision to infringe will see the Telog case as a reminder that willful infringement can be a very expensive decision. Pipetech International attorney, Blake Frye of the Atlanta law firm Hill, Kertscher & Wharton, LLP added, “Pipetech International is an example of precisely the type of Company that the U.S. patent system is designed to protect – a Company that developed innovative technology, manufactured products incorporating that technology, and sought to advance them in the marketplace without interference from competitors who had no right to Pipetech’s intellectual property.”