Whirlpool sues company over counterfeit fridge filters

Home appliance maker Whirlpool has sued a company that sells water filters for refrigerators over alleged counterfeiting and trademark and patent infringement.

Whirlpool filed the complaint (pdf) yesterday, June 4, in the US District Court for the Eastern District of Texas Marshall Division against Pricebreak, based in New York.

The case concerns products that allegedly infringe Whirlpool’s main brand as well as the trademarks ‘Maytag’, ‘Amana’ and ‘Jenn-Air’ (household appliances), ‘KitchenAid’ (kitchen appliances) and ‘EveryDrop’ (refrigerator water filters).

Whirlpool also cited US patent number 7,000,894, called “Fluidic cartridges and end pieces thereof”, as having been infringed. The patent covers water filters including the Filter 1 and Filter 3 products.

The company said that Pricebreak is using the trademarks on “counterfeit refrigerator water filters” without permission and that these directly compete with Whirlpool’s filters. In the lawsuit, it issued side-by-side comparisons between genuine goods and the allegedly counterfeit products.

Whirlpool noted that in April 2016, it sued Pricebreak in the same court for infringing the ‘894 patent, but the companies later resolved their dispute and signed a settlement agreement, which became effective in June 2016.

According to Whirlpool, Pricebreak and all “affiliated persons” defined in the agreement agreed to stop manufacturing, using, offering to sell, selling, importing and/or distributing products that infringe the ‘894 patent.

However, since the agreement became effective, Pricebreak has continued to sell replacement water filters that infringe the ‘894 patent, “including some of the counterfeit filters”, Whirlpool alleged.

The company has filed the suit based on four counts: breach of settlement agreement; counterfeiting; trademark infringement; and false designation of origin. It wants a preliminary and permanent injunction against the sale of the trademark-infringing goods plus triple damages, and a permanent injunction for patent infringement, among other forms of relief.

The decision came on the same day that the US Supreme Court declined to hear a patent case between Whirlpool and Homeland Housewares, the maker of the NutriBullet food blender.

In August 2017, the US Court of Appeals for the Federal Circuit reversed a decision by the Patent Trial and Appeal Board which had rejected Homeland’s attempt to invalidate a patent owned by Whirlpool.

Whirlpool then filed a writ of certiorari before the Supreme Court.