DCT

2:24-cv-05224

Erico Intl Corp v. Orbit Industries Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:24-cv-05224, C.D. Cal., 04/21/2025
  • Venue Allegations: Venue is alleged to be proper in the Central District of California because Defendant is a California corporation with its principal place of business in the district and has allegedly committed acts of patent infringement within the district.
  • Core Dispute: Plaintiff alleges that Defendant’s electrical mounting brackets and adjustable boxes infringe three of its utility patents and one design patent related to adjustable and secure mounting technology for electrical boxes.
  • Technical Context: The technology concerns mounting brackets for electrical boxes, a fundamental component in building construction used to ensure that electrical outlets and fixtures are installed securely and flush with finished wall or ceiling surfaces, as required by electrical codes.
  • Key Procedural History: The complaint is a First Amended Complaint. The asserted '069 Patent is a continuation of the application that matured into the asserted '882 Patent, indicating a shared technological lineage. No prior litigation or post-grant proceedings are mentioned.

Case Timeline

Date Event
2001-01-01 ERICO alleges sales of its CJ6 Support product began "at least as early as 2001"
2019-11-27 Earliest Priority Date for '882 and '069 Patents
2021-02-19 Priority Date for '130 Patent
2021-05-13 Priority Date for D’975 Patent
2023-08-29 '882 Patent Issued
2024-04-30 D’975 Patent Issued
2024-06-11 '069 Patent Issued
2025-03-04 '130 Patent Issued
2025-04-21 First Amended Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 11,739,882 - "Bracket For Adjustable-Depth Mounting Of Electrical Boxes"

  • Patent Identification: U.S. Patent No. 11,739,882, issued August 29, 2023. (Compl. ¶14).

The Invention Explained

  • Problem Addressed: The patent addresses the need to mount electrical boxes at precise, variable depths relative to building support structures (e.g., wall studs, ceiling grids) to ensure the forward opening of the box is flush with the final wall or ceiling surface, such as drywall. ('882 Patent, col. 1:15-22).
  • The Patented Solution: The invention is a bracket assembly featuring support arms that hold threaded fasteners. These fasteners engage the electrical box and can be adjusted—notably, from inside the electrical box—to move the box forward or backward relative to the support bracket. This allows for fine-tuning the box's depth after the initial installation. ('882 Patent, Abstract; col. 6:34-51; Fig. 2).
  • Technical Importance: This approach simplifies achieving a code-compliant installation by allowing electricians to make fine depth adjustments easily, even after surrounding wall materials are in place. ('882 Patent, col. 5:20-29).

Key Claims at a Glance

  • The complaint asserts infringement of the '882 Patent and refers to a claim chart in an unprovided exhibit. Independent Claim 1 is representative of the core technology. (Compl. ¶37).
  • Key elements of Independent Claim 1 include:
    • A support body with a fully enclosed opening sized to slidably receive an electrical box.
    • First and second support arms that extend integrally from opposing edges of the body opening.
    • Each arm has a bend to position a support portion behind a corner of the electrical box's rear wall.
    • Each support portion rotatably supports a threaded fastener that engages the electrical box.
    • The fastener is "rotatable from inside the electrical box" to adjust its depth.
    • A plurality of guide tabs extend integrally from the support body to "biasingly engage" the side walls of the electrical box to guide its movement.
  • The complaint appears to reserve the right to assert additional claims.

U.S. Patent No. 12,007,069 - "Bracket For Adjustable-Depth Mounting Of Electrical Boxes"

  • Patent Identification: U.S. Patent No. 12,007,069, issued June 11, 2024. (Compl. ¶17).

The Invention Explained

  • Problem Addressed: As a continuation of the '882 Patent's application, this patent addresses the same technical challenge of adjustably mounting electrical boxes to building support structures. ('069 Patent, col. 1:15-22).
  • The Patented Solution: The invention discloses a bracket assembly with a support body from which two support arms "extending independently" are positioned on opposing sides of the box. These arms have portions that sit behind the box and hold fasteners, which can be adjusted from inside the box to set its depth. The claims emphasize that the support portions are located at "diagonally opposite" corners. ('069 Patent, Abstract; col. 14:20-37).
  • Technical Importance: The diagonal, independent support arm configuration is presented as a stable and reliable method for achieving post-installation depth adjustment. ('069 Patent, col. 6:23-33).

Key Claims at a Glance

  • The complaint asserts infringement of the '069 Patent and refers to a claim chart in an unprovided exhibit. Independent Claim 9 is representative. (Compl. ¶38).
  • Key elements of Independent Claim 9 include:
    • A support body with an opening sized to slidably receive an electrical box.
    • A first and a second support arm extending integrally from the support body on opposing sides of the opening, with the arms "extending independently" of each other.
    • Each arm has a support portion configured to extend "partly across a respective corner of the body opening," with the corners being "diagonally opposite each other."
    • Each support portion retains a fastener that extends through the rear wall of the electrical box and is engageable from inside the box to adjust its depth.
  • The complaint appears to reserve the right to assert additional claims.

U.S. Patent No. 12,244,130 - "Mounting Bracket With Bendable Tabs For Electrical Boxes"

  • Patent Identification: U.S. Patent No. 12,244,130, issued March 4, 2025. (Compl. ¶21).
  • Technology Synopsis: This patent discloses a mounting bracket designed to secure electrical boxes of different sizes without a separate mud ring. It features multiple sets of keyhole slots to accommodate different fastener patterns and uses integrated bendable tabs. One tab can be bent to engage the exterior surface of a smaller box, while another tab can be bent to engage the interior surface of a larger box, locking them in place. ('130 Patent, Abstract).
  • Asserted Claims: Claims 1-8, 14, and 18-20 are asserted. Independent claims include 1, 14, and 18. (Compl. ¶40).
  • Accused Features: The "UMA-LVBS Products" are accused of infringing the '130 Patent by allegedly incorporating its claimed features, including the use of bendable tabs to secure electrical boxes. (Compl. ¶40).

U.S. Patent No. D1,024,975 - "Electrical Bracket With Hole Pattern"

  • Patent Identification: U.S. Patent No. D1,024,975, issued April 30, 2024. (Compl. ¶25).
  • Technology Synopsis: This design patent protects the ornamental, non-functional appearance of an electrical bracket. The claimed design is defined by the specific shapes and contours shown in solid lines in the patent's drawing, which the complaint characterizes as "three organic, wave-like designs" located in three of the bracket's four corners. (Compl. ¶44; D'975 Patent, Fig. 1).
  • Asserted Claims: Design patents contain a single claim for the ornamental design as shown and described.
  • Accused Features: The "UMA-LVBS Products" are accused of infringing by allegedly adopting an overall appearance that is "substantially the same" as the patented design in the eyes of an ordinary observer. (Compl. ¶43). The complaint provides a side-by-side comparison of the D'975 patent's drawing and a photograph of the accused Orbit UMA-LVBS product, highlighting the alleged similarity in the corner designs. (Compl. p. 8).

III. The Accused Instrumentality

Product Identification

The complaint identifies two families of accused products:

  1. Orbit’s "Universal Mounting Internal Adjustment Boxes" (UMIAB Products), including specific product numbers UMIAB-25, FA-UMIAB-25, UMIAB-35, FA-SSB-UMIAB-35, and FA-TBAR-UMIAB-35. These are accused of infringing the ’882 and ’069 Patents. (Compl. ¶37).
  2. Orbit’s "Universal Mounting Adapter with Back Support products" (UMA-LVBS Products). These are accused of infringing the ’130 and D’975 Patents. (Compl. ¶40).

Functionality and Market Context

  • Based on the allegations, the UMIAB Products are electrical boxes integrated with a mounting system that allows for their depth to be adjusted relative to a support structure. (Compl. ¶37).
  • The UMA-LVBS Products are described as mounting adapters, suggesting they are brackets used to mount separate electrical boxes. (Compl. ¶40).
  • The complaint alleges that Orbit has engaged in a "blatant infringement campaign" by marketing and selling these products to "profit off of the substantial time and resources expended by Plaintiff." (Compl. ¶35).

IV. Analysis of Infringement Allegations

The complaint alleges direct infringement under 35 U.S.C. § 271(a) for all asserted patents, either literally or under the doctrine of equivalents. (Compl. ¶¶ 36-41). The complaint states that detailed claim charts for the asserted patents are attached as Exhibits D, G, and I; however, these exhibits were not provided with the complaint document. (Compl. ¶¶ 37, 38, 40).

The complaint’s narrative theory for the ’882 and ’069 Patents is that Orbit’s UMIAB Products are "adjustable-depth mounting" electrical boxes that embody the patented inventions. (Compl. ¶37). For the ’130 and D’975 Patents, the theory is that Orbit's UMA-LVBS Products incorporate the claimed bendable tab features and ornamental design, respectively. (Compl. ¶¶ 40, 43).

Identified Points of Contention

  • Scope Questions: A central question for the '882 and '069 Patents will be whether the specific components of the UMIAB Products meet the structural limitations of the claims. For example, do the accused products possess "support arms" that "extend integrally" from a "body opening" as claimed, or are they constructed differently?
  • Technical Questions: A key factual dispute will likely concern the precise mechanism of operation. Does the adjustment mechanism in the accused UMIAB Products allow for adjustment "from inside the electrical box" in the manner required by the claims of the '882 and '069 Patents? For the '130 Patent, the question will be whether the accused UMA-LVBS Products utilize "bendable tabs" that engage an "exterior surface" of one box and an "interior surface" of another in the manner claimed.

V. Key Claim Terms for Construction

The Term: "extends integrally"

(from Claim 1 of the '882 Patent and Claim 9 of the '069 Patent)

  • Context and Importance: This term defines the physical relationship between the support arms and the main body of the bracket. Its construction is critical because it may determine whether the claims are limited to brackets made from a single piece of material or if they can also read on multi-piece assemblies.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The term itself does not explicitly forbid methods of permanent attachment like welding or riveting that could result in a functionally integral unit.
    • Evidence for a Narrower Interpretation: The specifications of both the '882 and '069 Patents heavily feature a manufacturing method that starts with a "single-piece planar body" or "blank." ('882 Patent, col. 11:22-26; Fig. 12). A defendant may argue that this repeated emphasis on a single-piece construction limits the term "integrally" to mean "formed from one and the same piece of material."

The Term: "rotatable from inside the electrical box"

(from Claim 1 of the '882 Patent and Claim 9 of the '069 Patent)

  • Context and Importance: This limitation describes a key functional advantage of the invention—the ability to perform fine depth adjustments after installation. Infringement will depend on whether the accused UMIAB Products' adjustment mechanism can be operated from the interior space of the box.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim language is functional and does not specify how the fastener is rotated, leaving open the possibility of various mechanisms (e.g., direct screw head access, indirect gear systems).
    • Evidence for a Narrower Interpretation: The patent figures, such as Figure 2 of the '882 Patent, depict a specific embodiment where the head of a fastener (114) is disposed within the interior of the electrical box (102), making it directly accessible. ('882 Patent, col. 7:6-14). A party could argue the term should be limited to such direct-access configurations shown in the preferred embodiments.

VI. Other Allegations

Indirect Infringement

The complaint focuses on allegations of direct infringement by Orbit's making, using, selling, and offering for sale the accused products and does not set forth specific factual allegations to support claims of induced or contributory infringement. (Compl. ¶¶ 57, 64, 71, 78).

Willful Infringement

The complaint alleges willful infringement for all four asserted patents. The basis for willfulness is alleged knowledge of the patents and infringement "At least as of the filing of the Complaint" or "At least as of the filing of this First Amended Complaint," indicating a theory of post-filing willfulness. (Compl. ¶¶ 62, 68, 75, 83).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A core issue will be one of claim scope and construction: Can the term "extends integrally," which appears in the claims of both the '882 and '069 Patents, be construed to cover multi-piece bracket assemblies, or is its meaning restricted by the specification's consistent disclosure of a "single-piece" manufacturing blank to only cover one-piece stamped products?
  • A key evidentiary question will be one of structural correspondence: Do the accused UMIAB Products contain the specific structural arrangements required by the asserted claims, such as support arms positioned at "diagonally opposite" corners ('069 Patent) and "guide tabs" that "biasingly engage" the electrical box walls ('882 Patent), or is there a material difference in their construction?
  • For the design patent, the case will likely turn on the ordinary observer test: Does the accused UMA-LVBS product's overall appearance, particularly its corner features as depicted in the complaint (Compl. p. 8), create a substantially similar visual impression to the claimed design of the D’975 Patent, or are the differences significant enough to distinguish them in the eyes of an ordinary purchaser?