Wiremold Co v. ABB Installation Products Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: The Wiremold Company (Connecticut)
  • Defendant: ABB Installation Products Inc. f.k.a. Thomas & Betts Corporation (Tennessee)
  • Plaintiff’s Counsel: McCarter & English, LLP
• Case Identification: 3:19-cv-01132, D. Conn., 07/23/2019
• Venue Allegations: Plaintiff alleges venue is proper because Defendant has committed acts of infringement in the district and maintains a regular and established place of business there. The complaint also asserts that Defendant waived defenses to personal jurisdiction and venue through its conduct in a related, earlier-filed case.
• Core Dispute: Plaintiff alleges that Defendant’s RPT6 line of recessed poke-through electrical fittings indirectly infringes two patents by being sold without a key component (a receptacle) but with instructions for customers to install that component, thereby completing the infringing device.
• Technical Context: The technology involves recessed in-floor electrical fittings, known as "poke-throughs," which provide power and data connections in commercial buildings while aiming to sit flush with the floor to prevent tripping hazards and maintain fire ratings.
• Key Procedural History: This complaint follows a prior, related case between the same parties (3:16-cv-02133-VLB). In that case, the court denied Plaintiff's motion to amend its complaint to add the same indirect infringement claims now asserted here. The court, in denying reconsideration, stated it reached "no conclusion" as to whether claim preclusion or res judicata would bar a new, separate action asserting indirect infringement, which prompted the filing of this lawsuit.

Case Timeline

Date	Event
2003-12-23	’503 Patent Priority Date
2006-08-29	’317 Patent Priority Date
2007-02-27	’503 Patent Issue Date
2011-11-22	’317 Patent Issue Date
2018-10-01	Plaintiff filed Motion for Leave to File Second Amended Complaint in Related Case
2019-06-28	Court denied Motion for Leave in Related Case
2019-07-08	Plaintiff filed Motion for Reconsideration in Related Case
2019-07-12	Court denied Motion for Reconsideration in Related Case
2019-07-23	Complaint Filing Date

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

U.S. Patent No. 7,183,503 - "Recessed In-Floor Fitting" (issued Feb. 27, 2007)

The Invention Explained

• Problem Addressed: The patent describes a need to solve problems with prior art in-floor electrical fittings, whose components often "upwardly protrude above the surface of the floor when...operatively connected," creating aesthetic issues and potential tripping hazards (ʼ503 Patent, col. 1:56-65).
• The Patented Solution: The invention is an in-floor fitting designed to remain flush with the floor even when in use. It features a cover with at least one access door that is "substantially flush with the upper surface of the trim ring when the access door is in the closed position," allowing a cable to pass through an egress opening while the main cover remains closed and flush (’503 Patent, col. 2:24-29, 4:6-11; Fig. 4). This is achieved by housing the electrical plug and connection point below the surface of the cover assembly (’503 Patent, col. 4:63-67).
• Technical Importance: This design sought to improve safety and aesthetics in commercial spaces by providing power and data access without the trip hazards associated with traditional poke-through fittings that protrude when in use (’503 Patent, col. 1:64-65).

Key Claims at a Glance

• The complaint asserts independent claim 16 and dependent claims 1-5, 7-8, and 17-20 (Compl. ¶12).
• The essential elements of independent claim 16 include:
  • an intumescent insert;
  • a top plate mounted to the insert, with support legs extending upwardly;
  • a trim ring mounted to the distal ends of the support legs;
  • at least one movable access door secured to the trim ring, configured to be substantially flush with the trim ring's upper surface when closed, and defining an opening; and
  • at least one receptacle with at least a portion housed within the top plate and intumescent insert.

U.S. Patent No. 8,063,317 - "Recessed Poke-Through Fitting" (issued Nov. 22, 2011)

The Invention Explained

• Problem Addressed: The patent identifies challenges in maintaining the fire-stop effectiveness of poke-through fittings. Intumescent material, which expands with heat to seal openings, can expand downward and away from the fitting if it extends below a concrete slab, diminishing its fire-rating effectiveness (’317 Patent, col. 2:1-4). Additionally, covers with protruding or uneven surfaces remain an issue (’317 Patent, col. 2:5-10).
• The Patented Solution: The invention discloses a recessed outlet box featuring a "retention structure" designed to receive an intumescent body. This structure serves a dual purpose: it has a wall to "engage the wall of the hole in the floor to retain" the fitting, and a base "configured to contain the expansion of said intumescent insert," directing the fire-stop material upward into the fitting (’317 Patent, col. 2:40-50; Abstract). The fitting also includes a cover that allows a cord to pass through while in a closed, flush position.
• Technical Importance: This configuration enhances fire safety by ensuring the controlled, effective expansion of intumescent material within the fitting, while also providing the functional and aesthetic benefits of a flush-mount design (’317 Patent, col. 1:31-38).

Key Claims at a Glance

• The complaint asserts independent claim 36 and dependent claims 29, 31, and 34-35 (Compl. ¶12).
• The essential elements of independent claim 36 include:
  • an intumescent insert configured to expand with heat and retain at least one receptacle;
  • a retention structure configured to receive the insert, having a wall to engage the floor hole and a base to contain the insert's expansion; and
  • a cover mounted along the floor, defining an interior passage for a plug and cord, and movable to a closed position that allows the cord to extend through.

III. The Accused Instrumentality

Product Identification

• The complaint identifies Defendant's "RPT6 poke-throughs," including catalog numbers RPT6-3G-ALM, RPT6-3G-BLK, and RPT6-3G-BRS (Compl. ¶11, ¶20).

Functionality and Market Context

• The accused products are recessed, fire-rated poke-throughs sold for installation in building floors (Compl. ¶11). The central allegation is that Defendant sells these products "without receptacles" but designs them to be "configured to receive receptacles" (Compl. ¶12, ¶24). The complaint alleges that infringement occurs when customers and third parties purchase the RPT6 units and then install receptacles in them, an action allegedly done "in accordance with Defendant's instructions" (Compl. ¶27).

IV. Analysis of Infringement Allegations

’503 Patent Infringement Allegations

Claim Element (from Independent Claim 16)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
an intumescent insert	The complaint alleges that when a receptacle is installed, the RPT6 product constitutes an in-floor fitting that includes an intumescent insert.	¶21	col. 3:20-24
a top plate being mounted to said intumescent insert, said top plate comprising support legs extending upwardly therefrom	The complaint alleges the completed RPT6 product includes a top plate mounted to the insert, with support legs extending upwardly.	¶21	col. 3:25-26
a trim ring having an upper surface, said trim ring being mounted to distal ends of said support legs	The complaint alleges the completed RPT6 product includes a trim ring with an upper surface, mounted to the distal ends of the support legs.	¶21	col. 3:56-61
at least one access door secured to said trim ring and being movable...wherein the at least one access door is configured to be substantially flush with the upper surface of the trim ring when the access door is in the closed position...	The complaint alleges the completed RPT6 product includes at least one movable access door secured to the trim ring, which is configured to be substantially flush with the trim ring's upper surface when closed.	¶21	col. 4:6-11
at least one receptacle, wherein at least a portion of said at least one receptacle is housed within said top plate and the intumescent insert	The complaint alleges the completed RPT6 product includes at least one receptacle, a portion of which is housed within the top plate and intumescent insert. This element is allegedly met when the customer installs the part.	¶21	col. 4:56-62

’317 Patent Infringement Allegations

Claim Element (from Independent Claim 36)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
an intumescent insert that is configured to expand when activated by heat, said intumescent insert retaining at least one receptacle therein	The complaint alleges that when a receptacle is installed, the RPT6 product constitutes a fitting that includes an intumescent insert configured to expand with heat and retain a receptacle.	¶23	col. 4:61-64
a retention structure configured to receive said intumescent insert, said retention structure having a wall configured to engage the wall of the hole in the floor to retain said intumescent insert...and a base configured to contain the expansion of said intumescent insert	The complaint alleges the completed RPT6 product includes a retention structure that receives the insert, has a wall to engage the floor hole to retain the insert, and has a base to contain the insert's expansion.	¶23	col. 5:44-50
a cover configured to be mounted along the floor and defining an interior passage...for receiving a plug with a cord...said cover being configured to be moved to a closed position about said passage and allow the cord to extend therethrough when in said closed position.	The complaint alleges the completed RPT6 product includes a cover that is mounted along the floor, defines a passage for a plug and cord, and can be moved to a closed position that allows the cord to extend through.	¶23	col. 4:42-56

Identified Points of Contention

• Legal Question: The central dispute is one of indirect infringement. The case does not allege Defendant sells a fully infringing product. The primary question for the court will be whether Defendant's alleged actions—selling an incomplete product that is a material part of the invention and allegedly providing instructions for its completion—satisfy the legal standards for induced infringement under 35 U.S.C. § 271(b) and contributory infringement under § 271(c).
• Scope Question: The presence of a "receptacle" is required by the asserted claims of both patents. Since Defendant's product is sold without this component, the case will turn on whether Plaintiff can prove that customers complete the assembly and that Defendant intended this result.
• Technical Question: The complaint makes conclusory allegations that the completed RPT6 assembly meets each claim limitation. A key factual dispute may arise over whether the accused product, even when assembled, actually performs the claimed functions. For instance, what evidence demonstrates that the RPT6 cover is "substantially flush" with a cord in use ('503 Patent), or that its structure is "configured to contain the expansion" of the intumescent material ('317 Patent)?

No probative visual evidence provided in complaint.

V. Key Claim Terms for Construction

The Term: "receptacle" (’503 Patent, cl. 16; ’317 Patent, cl. 36)

• Context and Importance: This term is the lynchpin of the indirect infringement case, as it is the very element Plaintiff alleges Defendant omits from its product but instructs customers to add. Its construction is critical because the infringement theory depends entirely on this element being added post-sale to create a directly infringing assembly.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specifications appear to support a broad definition. The ’503 Patent states that fittings provide "electrical receptacles and communication/data receptacles (or jacks)" (’503 Patent, col. 1:20-23) and refers to devices like a "telephone, data, audio/visual connector, jack or device" (’503 Patent, col. 3:31-33).
  • Evidence for a Narrower Interpretation: A party seeking a narrower interpretation might point to specific embodiments, such as the "duplex receptacle" shown as item 53 in Figure 1 of the ’503 patent, to argue the term implies a standard power outlet, though the specification text appears to contradict such a narrow reading.

The Term: "substantially flush" (’503 Patent, cl. 16)

• Context and Importance: This term defines a primary technical benefit of the ’503 invention—avoiding a trip hazard. Practitioners may focus on this term because infringement will depend on whether the accused RPT6 product, when assembled and in use, achieves a state that can be considered "substantially flush," a term of degree.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The patent's background criticizes prior art for having "protrusions" that "pose tripping hazards" (’503 Patent, col. 1:64-65). This context suggests "substantially flush" could mean a state that does not create a meaningful trip hazard, allowing for minor deviations from a perfectly flat plane.
  • Evidence for a Narrower Interpretation: The abstract states the cover is substantially flush "when the cable is operatively connected to the receptacle and the cover is in the closed position." Figure 4 of the ’503 patent depicts this state with a very flat profile, which could be used to argue for a strict standard of flushness that the accused product may not meet.

The Term: "retention structure ... configured to ... contain the expansion of said intumescent insert" (’317 Patent, cl. 36)

• Context and Importance: This limitation describes a key fire-safety function. The infringement analysis will require determining if the accused product's housing is merely a passive container or if it is specifically "configured to contain" the expansion in the manner claimed.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The patent describes the structure as a "retaining cage or clip or retention or containment structure" (’317 Patent, col. 5:44-46), suggesting some flexibility in form. A party might argue any structure with a base that physically limits downward expansion meets this limitation.
  • Evidence for a Narrower Interpretation: The patent explains the importance of this feature is to "direct expanding intumescent material...upward and inward" to effectively seal the fitting (’317 Patent, col. 6:6-9). This suggests the term requires more than incidental containment; it implies a structure specifically designed to channel the expansion for improved fire-stopping, a feature a defendant might argue is absent in its product.

VI. Other Allegations

Indirect Infringement

• The complaint advances theories of both induced and contributory infringement.
  • Inducement: It is alleged that Defendant knew of the patents and intended for its customers to infringe by selling poke-throughs "configured to receive receptacles" and "instructing its customers and other third parties to install receptacles in such poke-throughs" (Compl. ¶29, ¶39). The affirmative act of providing instructions is the key allegation for inducement.
  • Contributory Infringement: It is alleged that the accused RPT6 products are a "material part" of the inventions, are "especially made for use in a way that infringes," and are "not suitable for any substantial non-infringing use" (Compl. ¶34, ¶44). The theory is that the poke-through housing has no commercially significant use without the installation of a receptacle.

Willful Infringement

• The complaint alleges willful infringement for all counts (Compl. ¶31, ¶36, ¶41, ¶45). The basis for willfulness appears to be pre-suit knowledge, supported by the allegation that "Defendant knew of and studied the claims of the ‘503 and ‘317 patents prior to selling RPT6 poke-throughs" (Compl. ¶25) and by the existence of the prior litigation between the parties.

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

• A central issue is one of indirect liability: Can Plaintiff prove that Defendant's sale of an incomplete product, combined with alleged instructions for its completion, meets the legal requirements for inducing or contributing to infringement, especially when Defendant itself does not make, use, or sell a fully assembled, infringing device?
• A key evidentiary question will be one of technical compliance: Assuming a customer assembles the accused product with a receptacle, does the resulting device meet every limitation of the asserted claims? Specifically, does the cover remain "substantially flush" in use as required by the ’503 patent, and does its housing perform the specific fire-safety function of a "retention structure" that is "configured to contain" intumescent expansion as claimed by the ’317 patent?
• A potential threshold question is one of claim preclusion: Will Defendant succeed in arguing that this separate lawsuit is barred by the doctrine of res judicata or claim preclusion, given the Plaintiff's unsuccessful attempt to add these same claims to the earlier, related litigation?