DCT
1:22-cv-01248
Hilti Aktiengesellschaft v. Specified Tech Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Hilti Aktiengesellschaft (Liechtenstein)
- Defendant: Specified Technologies Inc. (Delaware)
- Plaintiff’s Counsel: Young Conaway Stargatt & Taylor, LLP; Gardella Grace P.A.
- Case Identification: 1:22-cv-01248, D. Del., 11/16/2023
- Venue Allegations: Venue is alleged to be proper in the District of Delaware because Defendant is incorporated in Delaware.
- Core Dispute: Plaintiff alleges that Defendant’s firestop sealing tapes, retrofit devices, and firestop collars infringe six patents related to fire protection technologies for construction joints and wall penetrations.
- Technical Context: The technologies involve intumescent and deformable materials used in construction to seal gaps and openings, which is critical for preventing the spread of fire and smoke in buildings.
- Key Procedural History: The complaint alleges that Defendant has had knowledge of its alleged infringement of all asserted patents since at least September 23, 2022, the date the original complaint in the action was served. This date is cited as the basis for claims of induced, contributory, and potentially willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2015-02-13 | Earliest Priority Date for ’036 and ’528 Patents |
| 2015-04-27 | Earliest Priority Date for ’417, ’091, ’399, and ’711 Patents |
| 2019-04-23 | ’036 Patent Issued |
| 2020-03-24 | ’399 Patent Issued |
| 2020-04-07 | ’711 Patent Issued |
| 2020-05-05 | ’417 Patent Issued |
| 2020-09-15 | ’528 Patent Issued |
| 2021-10-05 | ’091 Patent Issued |
| 2022-09-23 | Original Complaint Served on Defendant |
| 2023-11-16 | First Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,267,036 - "Universal Joint Sealing Tape for Different Profile Dimensions and Seal Arrangement Having Such a Joint Sealing Tape," Issued April 23, 2019
The Invention Explained
- Problem Addressed: The patent describes the challenge of sealing construction joints, particularly in drywall frameworks that use U-profiles of varying widths (e.g., 2.5 to 10 inches). Conventional methods using sealing compounds are labor-intensive and error-prone, while existing sealing tapes require manufacturers to produce and builders to stock many different sizes, which is uneconomical. (’036 Patent, col. 2:19-30)
- The Patented Solution: The invention is a universal joint sealing tape comprising two sealing elements on an elongated "connection element." The core innovation is a perforation running down the center of the connection element. This perforation allows the tape to be easily separated by hand into two halves. This enables a single product to be used for narrow, one-sided seals or, when separated and pulled apart, adapted for wider U-profiles without requiring a different product. (’036 Patent, col. 5:50-64; Abstract)
- Technical Importance: The invention aims to provide a single, adaptable product that simplifies inventory and installation for sealing joints of various dimensions in construction. (’036 Patent, col. 2:31-40)
Key Claims at a Glance
- The complaint asserts at least independent claim 1. (Compl. ¶17)
- Claim 1 Elements:
- A joint sealing tape for sealing a joint between a first component and a second component.
- The tape comprises an elongated connection element and at least two sealing elements positioned on the connection element at a distance from and next to one another.
- The connection element has a perforation.
- The perforation is located within a central segment of the connection element.
- The perforation is configured to improve ease of separation of two halves of the joint sealing tape.
- The complaint does not explicitly reserve the right to assert dependent claims for this patent.
U.S. Patent No. 10,774,528 - "Universal Joint Sealing Tape for Different Profile Dimensions and Seal Arrangement Having Such a Joint Sealing Tape," Issued September 15, 2020
The Invention Explained
- Problem Addressed: As a continuation of the application leading to the ’036 Patent, the ’528 Patent addresses the same technical problem of providing an economical and versatile sealing tape for various construction joint widths. (’528 Patent, col. 2:25-34)
- The Patented Solution: The solution is again a joint sealing tape with a central perforation. The claims of the ’528 Patent, however, are structured differently, referring to a "connection section" and first and second "sealing sections." The claim language focuses on the functional outcome of the perforation, specifying that it allows a "distance to increase" between the sealing sections when they are separated and "installed together in an installed state." (’528 Patent, Claim 1; Abstract)
- Technical Importance: This patent provides an alternative scope of protection for the same core technology, focusing on the structural arrangement and functional capability of the perforated tape when used in its separated-but-co-installed configuration. (’528 Patent, col. 2:35-44)
Key Claims at a Glance
- The complaint asserts at least independent claim 1. (Compl. ¶46)
- Claim 1 Elements:
- A joint sealing tape for sealing a joint between a first component and a second component.
- The tape comprises a connection section and a first and second sealing section coupled to respective sides of the connection section.
- Each sealing section comprises an intumescent material extending longitudinally.
- The connection section has a perforation located within a central portion when in an uninstalled state.
- The perforation allows a distance to increase between the first and second sealing sections when they are separated along the perforation and installed together in an installed state.
- The complaint does not explicitly reserve the right to assert dependent claims for this patent.
Multi-Patent Capsule: U.S. Patent No. 10,641,417 - "Fire Protection Sleeve," Issued May 5, 2020
- Technology Synopsis: This patent addresses firestop devices for sealing openings where building features like cables pass through a wall. The invention describes a firestop apparatus with a frame containing two distinct, overlapping areas of intumescent material that extend in different directions to seal against a building feature upon exposure to heat. (Compl. ¶79)
- Asserted Claims: At least independent claim 1. (Compl. ¶78)
- Accused Features: The complaint alleges that the STI EZ Path® Retrofit Device, which features a steel housing and intumescent materials, infringes the ’417 patent. The overlapping "intumescent curtain" materials inside the device are identified as the infringing components. (Compl. ¶80-81, ¶85-89)
Multi-Patent Capsule: U.S. Patent No. 11,137,091 - "Fire Protection Sleeve," Issued October 5, 2021
- Technology Synopsis: As a continuation related to the ’417 Patent, this patent also concerns a firestop apparatus. The invention claims a device with a frame surrounding a first and second layer of material. The layers have aligned passageways and are offset in different planes, with at least one layer comprising a fire-resistant material. (Compl. ¶116)
- Asserted Claims: At least independent claim 1. (Compl. ¶115)
- Accused Features: The accused product is the STI EZ Path® Retrofit Device. The complaint alleges that the device's "leakage block" constitutes the first layer and the "intumescent curtain" constitutes the second layer, arranged within a frame as claimed. (Compl. ¶117, ¶121, ¶123)
Multi-Patent Capsule: U.S. Patent No. 10,596,399 - "Firestop Collar," Issued March 24, 2020
- Technology Synopsis: This patent describes a firestop apparatus with a modular frame made of multiple, removably coupled frame parts. The frame contains an intumescent material with a rectangular structure and an opening for a pipe or cable to pass through. The modularity allows the frame to be adapted to different opening sizes. (Compl. ¶151)
- Asserted Claims: At least independent claim 1. (Compl. ¶150)
- Accused Features: The complaint accuses two products: the EZ Path® Retrofit Device and the EZ Path® Cable Tray Retrofit Device. It alleges that these products have intumescent material within a modular frame whose parts are removably coupled with screws or interlocking tabs, allowing them to be detached and reattached. (Compl. ¶152, ¶157, ¶159, ¶167)
Multi-Patent Capsule: U.S. Patent No. 10,610,711 - "Firestop Collar," Issued April 7, 2020
- Technology Synopsis: Related to the ’399 Patent, this patent also claims a firestop collar with a modular construction. It specifies a frame made of individually separate parts joined end-to-end, with a removable joint between at least two parts to allow separation after installation. The intumescent material inside has a planar front and back surface with an opening passing through. (Compl. ¶201)
- Asserted Claims: At least independent claim 1. (Compl. ¶200)
- Accused Features: The complaint accuses the EZ Path® Cable Tray Retrofit Device. The allegations focus on the device's two-part design, which is described as being made of individually separate frame parts that can be separated and re-joined via screws and interlocking tabs. (Compl. ¶202, ¶210-211)
III. The Accused Instrumentality
- Product Identification: The complaint names three product families:
- SpeedFlex® Track Top Gasket (TTG), specifically Part Number TTG350F. (Compl. ¶18)
- EZ Path® Retrofit Device, specifically model numbers EZDR200 and EZDR400. (Compl. ¶80)
- EZ Path® Cable Tray Retrofit Device, specifically model numbers EZCTR612, EZCTR614, EZCTR616, and EZCTR618. (Compl. ¶167)
- Functionality and Market Context:
- SpeedFlex® TTG350F: This product is described as a "thin profile intumescent cover for gypsum wall framing" designed to provide fire, smoke, and acoustical ratings for various construction joints. (Compl. ¶19) The complaint highlights a "Technology Update" from the Defendant describing the addition of a "perforation down the center of the intumescent gasket" to allow it to be sliced in half by hand for different track configurations. (Compl. ¶23) An image provided in the complaint shows the product as a red, rolled tape with markings. (Compl. ¶22)
- EZ Path® Retrofit Device: This product is described as a device to restore fire ratings for "overfilled cable sleeve penetrations." It consists of a "heavy gauge galvanized steel housing containing intumescent materials that expand rapidly when exposed to fire or high temperatures to close off the void area." (Compl. ¶81) The complaint includes an exploded diagram showing the device's modular components, including an "intumescent curtain." (Compl. ¶85)
- EZ Path® Cable Tray Retrofit Device: This product is described as a "two-part design" that "installs around non-compliant cable tray penetrations" to restore fire and smoke leakage performance. (Compl. ¶168) The complaint references installation instructions that direct users to "remove corner screws and separate device into two halves" and later reattach them, highlighting its modular and removable nature. (Compl. ¶178) An image from installation instructions shows the device being installed in two halves. (Compl. ¶176)
IV. Analysis of Infringement Allegations
U.S. Patent No. 10,267,036 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| an elongated connection element and at least two sealing elements...positioned on the connection element at a distance from and next to one another... | The TTG350F product is alleged to be an elongated tape that includes a connection element and at least two sealing elements running longitudinally. | ¶22 | col. 2:60-65 |
| wherein the connection element has a perforation...located within a central segment of the connection element | The complaint alleges the TTG350F includes a perforation "down the center of the intumescent gasket," citing a "Technology Update" from Defendant. | ¶23-24 | col. 5:50-51 |
| and is configured to improve ease of separation of two halves of the joint sealing tape. | The "Technology Update" allegedly states the perforation allows a user to "quickly and easily slice the gasket in half by hand." The complaint provides an image showing the separated product. | ¶23-25 | col. 5:52-54 |
U.S. Patent No. 10,774,528 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a connection section; and a first sealing section and a second sealing section coupled to respective sides of the connection section... | The TTG350F is alleged to include a connection section with first and second sealing sections on its respective sides. An image depicts the product in a rolled form. | ¶52-53 | col. 12:21-25 |
| each of the first sealing section and the second sealing section comprising an intumescent material... | The TTG350F is described as a "thin profile intumescent cover" and consisting of a "thin profile intumescent with a Polyethylene backing material on one side." | ¶54 | col. 12:26-27 |
| wherein said connection section has a perforation, and wherein said perforation is located within a central portion...when in an uninstalled state... | Defendant’s "Technology Update" is cited, which allegedly states: "we've added a perforation down the center of the intumescent gasket." | ¶55-56 | col. 12:28-31 |
| said perforation allowing a distance to increase between the first sealing section and the second sealing section when the first...and the second sealing section are separated along said perforation and installed together in an installed state. | The complaint alleges that the perforation makes the TTG350F "suitable for less common track configurations such as 3-5/8 in. widths or dual stud walls," which suggests the separated halves are used together to span a wider distance. | ¶56 | col. 12:31-36 |
- Identified Points of Contention:
- Structural Identity: A potential question for both the ’036 and ’528 Patents is whether the single-body intumescent material of the accused TTG350F product can be mapped to the distinct claim elements of a "connection element/section" and separate "sealing elements/sections," or if it is a unitary structure that does not meet this limitation.
- Functional Scope ('528 Patent): The final limitation of claim 1 of the ’528 Patent requires the separated sections to be "installed together in an installed state." The analysis may focus on whether the alleged infringing use—adapting the tape for wider tracks—constitutes installing the two separated halves "together" in the manner claimed by the patent.
V. Key Claim Terms for Construction
For the ’036 Patent:
- The Term: "connection element"
- Context and Importance: This term defines the central structural backbone of the claimed tape to which the "sealing elements" are attached and through which the "perforation" runs. The definition will be critical to determining if the accused product, which the complaint describes as an "intumescent gasket," has a distinct "connection element" or is a single, unitary body.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification suggests the connection element and sealing elements can be "produced from one material and accordingly can be firmly connected with one another" and "sheathed by a film," which may support reading the term on a functionally distinct region of a single-piece product. (’036 Patent, col. 8:66-col. 9:2)
- Evidence for a Narrower Interpretation: Figures 1a-5b consistently depict the connection element (2) as a flat, central region structurally distinct from the thicker, profiled sealing elements (3a, 3b). This could support an argument that the term requires a physically distinct structure, not just a central region of a uniform gasket. (’036 Patent, Fig. 1a)
For the ’528 Patent:
- The Term: "installed together in an installed state"
- Context and Importance: This phrase is critical for infringement, as it defines the end-use configuration of the tape after it has been separated at the perforation. The dispute may turn on whether using the two halves on opposite sides of a wide wall track, as implied by the complaint's allegations, qualifies as being "installed together."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent's goal is to create a universal tape for different profile widths. This purpose may support a broad construction where "installed together" means used in the same construction joint to achieve a single sealing function, even if not physically touching. (’528 Patent, col. 2:35-44)
- Evidence for a Narrower Interpretation: The specification does not provide an explicit definition. A defendant may argue for a narrower meaning, such as requiring the two separated halves to be physically re-connected or immediately adjacent in their final installation, which may not be the case when sealing a wide wall track. The patent figures do not depict the "installed together" state.
VI. Other Allegations
- Indirect Infringement: The complaint includes separate counts for induced and contributory infringement for all six patents-in-suit. It alleges inducement is based on Defendant's affirmative acts of providing instructions, brochures, documentation, and videos that allegedly instruct customers and end users on how to use the accused products in an infringing manner. (Compl. ¶31-32, ¶63-64, ¶100-101, ¶135-136, ¶186-187, ¶219-220) For contributory infringement, the complaint alleges the accused products are especially made or adapted for practicing the inventions and are not staple articles of commerce suitable for substantial non-infringing use. (Compl. ¶39, ¶71, ¶108, ¶143, ¶194, ¶227)
- Willful Infringement: The complaint does not contain an explicit count for willful infringement. However, for each patent, it alleges that Defendant has known of its direct infringement "at least since being served with Hilti's Original Complaint on September 23, 2022." (Compl. ¶31, ¶63, ¶100, ¶135, ¶186, ¶219) These allegations of post-suit knowledge could form the basis for a later claim of willful infringement for any infringement occurring after that date.
VII. Analyst’s Conclusion: Key Questions for the Case
This case presents infringement allegations across three distinct product categories and two families of patents, raising several key questions for the court.
- A central issue for the '036 and '528 patents will be one of claim scope and structural mapping: does the accused TTG350F product, described as an "intumescent gasket," possess the distinct "connection element" and "sealing elements" required by the claims, or is it a unitary body whose structure falls outside the literal scope of the patent language?
- A second core issue, specific to the '528 patent, involves functional language: what is the proper construction of "installed together in an installed state," and does the alleged use of the separated tape halves to seal wider wall tracks meet this limitation?
- For the four patents related to firestop collars and sleeves ('417, '091, '399, and '711), a key question will be one of modularity and removability: do the accused EZ Path® devices, which are assembled with screws and interlocking tabs, meet the specific claim requirements for being "removably coupled" and allowing parts to "detach and reattach," and how does this compare to the structures disclosed in the patents?