Uponor settles PEX patent infringement cases

Uponor AB reached an intellectual property licensing agreement with two companies in Alberta, Calgary, that were under a court

order to halt production and sales of their cross-linked polyethylene (PEX) pipe for patent infringement.

Under the agreement, PexCor Manufacturing Co. Inc., a PEX pipe maker, and HeatLink Group Inc., a PEX pipe supplier, can resume business that had been halted by a March 16 ruling in the Federal Court of Canada.

The agreement also resolves other ongoing litigation between the three companies in Canada and the United States, according to a news release from Uponor North America, which is an affiliate of Uponor AB.

“We're pleased that we were able to come to an agreement that protects our valuable intellectual property,” Uponor North America President Bill Gray said in the release. “It's a fair outcome for all involved and allows us to focus on our respective markets and customers.”

Uponor North America ranks No. 16 among pipe, profile and tubing extruders in North America, according to Plastics News' latest ranking.

Wade Peterson, vice president of sales and marketing for HeatLink, which has the same owners as PexCor, agreed that the legal dispute was a distraction for all the businesses involved.

“We always believed we were innocent, but we respect the court systems in North America,” Peterson said in a telephone interview. “Mostly we're happy to put it behind us. There was a lot of uncertainty for our customers, who are wholesalers and contractors, and our employees that reaching a settlement has put to rest. There's a huge value in that.”

After the court order was issued, PexCor had to stop manufacturing the infringed products and HeatLink had to stop selling them in Canada. Peterson said it was a difficult 2½ weeks but everyone kept their jobs and still got paid.

“It wasn't easy,” he added. “Money wasn't coming in and we still got paychecks. We're a privately held family company and the owners are gems. That was a blessing for all of us.”

The company owners are Garry and Manfred Schmidt.

As soon as the agreement was made public on the afternoon of April 5, Peterson said he began calling customers to let them know their orders were shipping.

“By then, most had our information and Uponor's,” Peterson said. “The internet is fast and we share a lot of the same customers.”

The patent at the center of the five-year legal dispute relates to the manufacturing process of PEX pipe and an apparatus to make products from cross-linkable polymers at high speeds using infrared radiation.

Uponor made “multiple attempts” to settle the lawsuit over the years, Gray said in a telephone interview.

“We only ever sought to get a licensing agreement for intellectual property that was fairly ours,” he explained.

Uponor North America does not use the patent at issue for its PEX plumbing and radiant heating and cooling products right now but Gray said it is a substantial part of European operations.

Uponor North America is part of Vantaa, Finland-based Uponor Corp.

Updated April 8 with comments from Uponor North America President Bill Gray.