DCT
1:22-cv-01383
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: Hilti Aktiengesellschaft v. Specified Technologies Inc., 1:22-cv-01383, D. Del., 10/21/2022
- Venue Allegations: Venue is alleged to be proper in the District of Delaware because the Defendant is a Delaware corporation.
- Core Dispute: Plaintiff alleges that Defendant’s perimeter fire barrier systems and components infringe three patents related to fire-resistant facade assemblies for buildings.
- Technical Context: The technology concerns fire-protection systems used in the construction of building curtain walls to prevent the spread of fire and smoke between floors through the gap at the slab edge.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendant with actual notice of the asserted patents and its infringement theories via a letter dated September 23, 2022, approximately one month prior to filing the lawsuit. This letter allegedly included claim charts for each of the patents-in-suit and forms the basis for the willfulness allegations.
Case Timeline
| Date | Event |
|---|---|
| 2015-02-13 | Priority Date for ’629 and ’653 Patents |
| 2017-05-19 | Priority Date for ’566 Patent |
| 2018-11-27 | ’629 Patent Issued |
| 2019-12-31 | ’653 Patent Issued |
| 2022-05-24 | ’566 Patent Issued |
| 2022-09-23 | Plaintiff sends pre-suit notice letter to Defendant |
| 2022-10-21 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,138,629 - "Facade Assembly, Building Structure, and Method for Mounting the Facade Assembly," issued November 27, 2018
- The Invention Explained:
- Problem Addressed: The patent describes how, in a fire, heat can cause a building's metal facade to deform, creating a gap between the facade and the floor slab ('629 Patent, col. 5:46-51). This gap can compromise the fire-insulating material, allowing fire and smoke to spread between stories ('629 Patent, col. 1:40-51). Prior art methods to address this were described as labor-intensive and potentially risky for installers ('629 Patent, col. 2:6-12).
- The Patented Solution: The invention introduces a fire-protection element that includes not only an insulating layer (e.g., mineral wool) but also a rigid, "self-supporting angle profile" (a bracket) ('629 Patent, Abstract). One flange of this angle profile is fastened to the facade element, providing structural reinforcement, while the other flange "bears on the insulating layer," helping to hold it securely in place, even if the facade deforms ('629 Patent, col. 6:50-65; Fig. 2). The system can also include an elastic protective layer to cover the assembly ('629 Patent, col. 4:55-63).
- Technical Importance: This design proposes a more robust fire seal that remains effective during facade deformation and which can be installed more easily from a single story level ('629 Patent, col. 3:1-5).
- Key Claims at a Glance:
- The complaint asserts independent claim 1 and reserves the right to assert others (Compl. ¶¶ 14, 39).
- The essential elements of independent claim 1 include:
- A facade assembly comprising a facade element, a fire-protection element, and a protective layer.
- The fire-protection element itself comprises an insulating layer and a self-supporting angle profile with two flanges.
- One flange of the angle profile is fastened to the facade element.
- The other flange of the angle profile bears on the insulating layer.
- The protective layer comprises an elastic material.
U.S. Patent No. 10,519,653 - "Facade Assembly, Building Structure, and Method for Mounting the Facade Assembly," issued December 31, 2019
- The Invention Explained:
- Problem Addressed: As a continuation of the application that led to the ’629 patent, this patent addresses the same technical problem of maintaining a fire seal at the joint between a building's floor and facade during a fire ('653 Patent, col. 1:40-51).
- The Patented Solution: The invention again uses a self-supporting metal angle profile within the fire-protection element. However, the claims of this patent specify a more particular arrangement: the first flange is fastened to the facade, while the second flange extends in the same direction as the insulating layer and is explicitly "unfastened to the insulating layer" ('653 Patent, Claim 1). This configuration is designed to support the insulation and maintain the seal without requiring direct attachment between the second flange and the insulation itself, potentially allowing for easier installation and better performance during movement ('653 Patent, col. 7:45-50).
- Technical Importance: This patent refines the concept by focusing on a specific, non-attached supportive relationship between the angle profile and the insulation, which may offer advantages in manufacturing and performance.
- Key Claims at a Glance:
- The complaint asserts independent claim 1 and reserves the right to assert others (Compl. ¶¶ 43, 75).
- The essential elements of independent claim 1 include:
- A facade assembly comprising a facade element and a fire-protection element.
- The fire-protection element comprises an insulating layer and a self-supporting angle profile made of metal with two flanges.
- A first flange is fastened to the facade element.
- A second flange extends in a direction corresponding to the insulating layer.
- The second flange has a first and second surface that are both "unfastened to the insulating layer."
U.S. Patent No. 11,339,566 - "Dynamic, Fire-Resistance-Rated Thermally Insulating and Sealing System for Use with Curtain Wall Structures," issued May 24, 2022
- Technology Synopsis: This patent addresses firestopping in the "safing slot" between a floor and an exterior curtain wall, particularly for "zero spandrel" designs where vision glass extends down to the floor level ('566 Patent, Background of the Invention). The invention describes a multi-part system using a recessed plate (the "first element") that has a "moment of inertia that is sufficient enough" to hold a second and third insulating element in place without direct support from the floor slab, creating a dynamic seal that can accommodate building movement ('566 Patent, Claim 1).
- Asserted Claims: The complaint asserts independent claim 1 (Compl. ¶79).
- Accused Features: The complaint accuses Defendant’s "Zero Spandrel System" of infringement, alleging that it includes a recessed plate and separate insulation components that correspond to the claimed first, second, and third elements of the system (Compl. ¶¶ 80, 90, 92, 96, 100).
III. The Accused Instrumentality
- Product Identification: The complaint identifies several of Defendant’s product lines, which are alleged to be used in combination to form infringing assemblies. These include: SpecSeal® Safing Spray, SpecSeal® Fast Tack® Firestop Spray, the Quick Clip™ L-Bracket Perimeter Fire Barrier System, the U/Z Bracket Perimeter Fire Barrier System, and the "Zero" Spandrel System (Compl. ¶¶ 16, 18, 28, 48, 61, 80).
- Functionality and Market Context: The accused products are components used to create passive fire protection barriers in the perimeter joint (safing slot) between a building floor slab and an exterior curtain wall (Compl. ¶¶ 18, 29, 47). The systems generally consist of metal brackets (L, U, or Z-shaped) designed to hold fire-resistant insulation (e.g., mineral wool) in the joint, often in combination with a sprayable elastomeric coating to seal the assembly (Compl. ¶¶ 18, 51, 64). The complaint alleges Defendant markets these products as a way to "accelerate the installation of curtain wall insulation" (Compl. ¶¶ 47, 60). A diagram from Defendant's brochure shows a cutaway view of an installed Perimeter Fire Barrier System at the edge of a concrete floor (Compl. ¶19, Ex. 5 at 1).
IV. Analysis of Infringement Allegations
’629 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a facade assembly for a building, comprising: at least one facade element, configured to be fastened to a wall or an inter-story ceiling of the building, | The accused Perimeter Fire Barrier System is used with a facade comprising mullions, transoms, and vision glass, which are fastened to a building's floor or ceiling via a curtain wall anchor (Compl. ¶¶ 19, 20). | ¶20 | col. 6:13-17 |
| at least one fire-protection element, configured to be mounted between the facade element and the wall or the inter-story ceiling, | The system includes a fire-protection element, including safing insulation, mounted in the joint between the facade and the concrete floor (Compl. ¶21, Ex. 5 at 1). | ¶21 | col. 6:18-22 |
| a protective layer which covers the fire. protection element at least partly, | A layer of SpecSeal® Safing Spray or Fast Tack® spray is applied over the insulation. A diagram from Defendant's brochure shows this spray coating (in red) covering the insulation element (Compl. ¶22, Ex. 5 at 1). | ¶22 | col. 8:3-6 |
| wherein the fire-protection element comprises an insulating layer and at least one self-supporting angle profile with two flanges disposed at an angle relative to one another, | The fire-protection element is alleged to include an insulating layer (safing insulation) and a "curtain wall anchor" that functions as the claimed self-supporting angle profile with two flanges (Compl. ¶¶ 23, 24, Ex. 5 at 1). | ¶¶23-24 | col. 6:60-62 |
| wherein one of the flanges of the angle profile is fastened to the facade element and the other flange of the angle profile bears on the insulating layer, and | The first flange of the curtain wall anchor is fastened to the facade, and the second flange is depicted as bearing on the safing insulation (Compl. ¶¶ 25, 26, Ex. 5 at 1). | ¶¶25-26 | col. 8:10-14 |
| wherein the protective layer comprises an elastic material. | The complaint cites Defendant's product data sheet, which describes the SpecSeal® Safing Spray as a "latex-based elastomeric coating" (Compl. ¶¶ 18, 27). | ¶27 | col. 4:60-63 |
- Identified Points of Contention:
- Scope Questions: The complaint identifies a "curtain wall anchor" as the claimed "angle profile." A question for the court may be whether this anchor, which may be supplied by third parties, is part of the "system" for which Defendant is liable for inducing infringement.
- Technical Questions: A factual dispute may arise over whether the accused "curtain wall anchor" is "self-supporting" as required by the claim and whether its interaction with the insulation constitutes "bearing on" it in the manner taught by the patent.
’653 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A facade assembly for a building, comprising: at least one facade element... and at least one fire-protection element... | The accused L-Bracket and U/Z Bracket Perimeter Fire Barrier Systems are installed with facade elements (mullions, glass) and contain fire-protection elements (insulation, brackets) mounted between the facade and the floor slab (Compl. ¶¶ 49-51). | ¶¶49-51 | col. 5:28-34 |
| wherein the fire-protection element comprises an insulating layer and at least one self-supporting angle profile with two flanges... | The system includes an insulating layer and an L-bracket, U-bracket, or Z-bracket alleged to be a self-supporting angle profile with two flanges (Compl. ¶¶ 51, 52, 65, 66). An annotated diagram shows the two flanges of an L-bracket (Compl. ¶52, Ex. 5 at 1). | ¶¶51-52 | col. 6:31-33 |
| wherein a first flange... extends in a first direction and is fastened to the facade element and a second flange... extends in a second direction corresponding to a direction in which the insulating layer extends, | The complaint alleges the first flange of the L-bracket is fastened to the facade's mullion, and the second flange extends into the safing slot, parallel to the direction of the insulation (Compl. ¶¶ 53, 55). An annotated diagram illustrates this alleged orientation (Compl. ¶55, Ex. 5 at 1). | ¶¶53, 55 | col. 8:15-24 |
| the... second flange... unfastened to the insulating layer, | The complaint alleges that fasteners pass through the insulation to secure it to the first flange, leaving the first and second surfaces of the second flange unfastened to the insulation (Compl. ¶57). An annotated diagram shows this arrangement (Compl. ¶57, Ex. 5 at 1). | ¶57 | col. 8:23-28 |
| and wherein the first flange and the second flange are made of at least one metal. | Defendant's product literature is cited, which identifies the material for the accused brackets as "Galvanized steel" or "Heat treated galvanized steel" (Compl. ¶¶ 58, 74). | ¶¶58, 74 | col. 2:30-32 |
- Identified Points of Contention:
- Scope Questions: A central issue will be claim construction of the term "angle profile with two flanges." The complaint accuses L-brackets, U-brackets, and Z-brackets. A question for the court is whether the claim term is limited to a simple L-shape or if it can be construed to read on the more complex geometries of U- and Z-brackets.
- Technical Questions: The infringement theory hinges on the "unfastened" limitation. A factual dispute may arise as to whether the compressive forces from the installed insulation and the interaction with the fasteners create a functional equivalent of "fastening" that would place the accused systems outside the literal scope of this negative limitation.
V. Key Claim Terms for Construction
- The Term: "angle profile" ('629 Claim 1; '653 Claim 1)
- Context and Importance: This term's construction is critical because the complaint accuses not only L-shaped brackets but also U-shaped and Z-shaped brackets of infringement (Compl. ¶¶ 52, 65, 66). The definition of "angle profile" will determine whether the U- and Z-bracket systems fall within the scope of the asserted claims.
- Intrinsic Evidence for a Broader Interpretation: The shared specification of the patents states that the profile "may also be formed as a special profile" and is only "preferably" an "L-shaped profile," which suggests the term is not intended to be limited to a strict 90-degree, two-flange structure ('629 Patent, col. 3:6-11).
- Intrinsic Evidence for a Narrower Interpretation: The primary embodiment depicted and described throughout the specification is an "L-shaped profile" ('629 Patent, Fig. 2; col. 6:61). A defendant may argue that this consistent focus on an L-shape limits the scope of the term to that specific geometry.
- The Term: "unfastened to the insulating layer" ('653 Claim 1)
- Context and Importance: This negative limitation is a key distinguishing feature of the '653 patent. The complaint's infringement theory relies on fasteners passing through the insulation to connect to the first flange, leaving the second flange physically unattached (Compl. ¶57). Practitioners may focus on this term because its construction will be dispositive of infringement for the L, U, and Z-bracket systems.
- Intrinsic Evidence for a Broader Interpretation: The specification describes the second flange being "brought into contact with" or "laid on" the insulation, without mentioning screws, adhesives, or other positive fastening means ('653 Patent, col. 5:45-47, col. 8:55-62). This could support an interpretation where any configuration lacking a discrete fastener meets the "unfastened" requirement.
- Intrinsic Evidence for a Narrower Interpretation: A defendant could argue that the term "unfastened" implies more than just the absence of a screw. If the insulation is held in place by significant compressive or frictional forces against the second flange, it might be argued that this constitutes a form of functional "fastening," thereby avoiding infringement.
VI. Other Allegations
- Indirect Infringement: The complaint pleads active inducement of infringement for all three patents. It alleges that Defendant encourages its customers to assemble the accused systems in an infringing manner through its "instructions for use, documentation, online technical support and videos, [and] marketing" materials (Compl. ¶¶ 16, 45, 80).
- Willful Infringement: Willfulness is alleged based on pre-suit knowledge of the patents and infringement. The complaint specifically identifies a notice letter and attached claim charts sent to Defendant on September 23, 2022, providing a clear factual basis for the allegation that any post-notice infringement was knowing and deliberate (Compl. ¶¶ 17, 46, 81).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "angle profile with two flanges," which is primarily exemplified in the patents as a simple L-bracket, be construed broadly enough to read on the more complex geometries of the accused U-brackets and Z-brackets?
- A second key question will be one of functional operation: does the accused interaction between the bracket flanges and the insulation meet the precise requirements of the claims? Specifically, for the ’653 patent, is the second flange truly "unfastened" from the insulation in an assembled state, or do the compressive and frictional forces inherent in the system create a functional fastening that places it outside the claim's scope?
- A final question will concern inducement: to what extent does the evidence, such as Defendant's installation guides and marketing materials, demonstrate a specific intent for customers to combine the accused components with third-party materials (like insulation and facade anchors) to create the complete, infringing "facade assembly" recited in the claims?