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: 1:22-cv-01383, D. Del., 10/27/2022
- Venue Allegations: Venue is alleged to be proper as Defendant is a corporation organized under the laws of Delaware.
- Core Dispute: Plaintiff alleges that Defendant’s perimeter fire barrier systems for building facades infringe four patents related to fire-resistant facade assemblies and sealing systems.
- Technical Context: The technology concerns firestopping systems designed to seal the gap between a building's floor slab and its exterior curtain wall, a critical function for preventing the spread of fire between floors in modern high-rise construction.
- Key Procedural History: This First Amended Complaint was filed on October 27, 2022, following an original complaint filed on October 21, 2022. Plaintiff alleges that Defendant received a notice letter on September 23, 2022, which included non-exhaustive claim charts and provided actual notice of the asserted patents and alleged infringement, forming a basis for the willfulness claims. The U.S. Patent and Trademark Office issued a Certificate of Correction for the '759 Patent on October 25, 2022.
Case Timeline
| Date | Event |
|---|---|
| 2015-02-13 | Earliest Priority Date ('629, '653 Patents) |
| 2017-05-19 | Earliest Priority Date ('759, '566 Patents) |
| 2018-11-27 | '629 Patent Issued |
| 2019-02-12 | '759 Patent Issued |
| 2019-12-31 | '653 Patent Issued |
| 2022-05-24 | '566 Patent Issued |
| 2022-09-23 | Pre-Suit Notice Letter Sent to Defendant |
| 2022-10-21 | Original Complaint Filed |
| 2022-10-25 | Certificate of Correction for '759 Patent Issued |
| 2022-10-27 | First Amended 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: In a fire, the metal cladding on a building's exterior facade can deform, creating a gap between the facade and the floor slab that allows fire and smoke to propagate to the story above (ʼ629 Patent, col. 1:40-52).
- The Patented Solution: The invention proposes a fire-protection element comprising an insulating layer (e.g., mineral wool) combined with a self-supporting "angle profile" (L-bracket). One flange of this profile is fastened to the facade element to add stiffness and reduce deformation, while the other flange bears on the insulating layer to hold it securely in place and cover any gap that forms during a fire (ʼ629 Patent, Abstract; col. 2:51-65). This integrated design is intended to be simpler to install than prior art multi-part solutions (ʼ629 Patent, col. 3:1-5).
- Technical Importance: The design aims to create a more robust and reliable fire seal that can accommodate facade deformation while simplifying the installation process.
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶16).
- Key elements of Claim 1 include:
- A facade assembly with a facade element and a fire-protection element mounted between the facade and the building's inter-story ceiling.
- The fire-protection element comprises an insulating layer and a self-supporting angle profile with two flanges.
- One flange is fastened to the facade element.
- The other flange bears on the insulating layer.
- A protective layer comprising an elastic material covers the fire-protection element at least partly.
- The complaint reserves the right to assert additional claims (Compl. ¶40).
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: The patent addresses the same technical problem as its parent '629 Patent: the potential for a gap to form between a building's facade and floor slab during a fire due to thermal deformation of facade components (ʼ653 Patent, col. 1:45-56).
- The Patented Solution: This invention refines the angle profile concept by adding specific structural limitations. It explicitly requires that the second flange of the angle profile—the one that interacts with the insulation—has surfaces that are "unfastened to the insulating layer" (ʼ653 Patent, Abstract). This configuration allows the profile to secure the insulation via pressure and positioning without being physically bonded or screwed to it, potentially allowing for better performance under dynamic movement during a fire (ʼ653 Patent, col. 3:39-44).
- Technical Importance: This design focuses on a specific, non-attached relationship between the angle profile and the insulation to maintain a fire seal during the differential movement and distortion of facade components in a fire.
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶45).
- Key elements of Claim 1 include:
- A facade assembly with a facade element and a fire-protection element.
- The fire-protection element comprises an insulating layer and a self-supporting angle profile made of at least one metal.
- A first flange of the angle profile is fastened to the facade element.
- A second flange extends in the direction of the insulating layer and has two opposing surfaces.
- The first and second surfaces of the second flange are "unfastened to the insulating layer."
- The complaint reserves the right to assert additional claims (Compl. ¶76).
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 describes a system for sealing the safing slot in "zero spandrel" curtain walls, where vision glass extends to the floor level. The invention is a multi-part assembly comprising a plate and separate "second" and "third" thermally resistant elements. The system is designed such that the plate has a sufficient "moment of inertia" to hold the insulating elements in place, maintaining the seal during building movement (ʼ566 Patent, col. 7:5-8:1).
- Asserted Claims: Independent Claim 1 is asserted (Compl. ¶81).
- Accused Features: Defendant’s "Zero" Spandrel System is accused of infringement. The complaint alleges the system's steel pan constitutes the claimed "plate," and its separate mineral wool components constitute the claimed "second element" and "third element" (Compl. ¶¶92, 94, 98).
U.S. Patent No. 10,202,759 - “Dynamic, Fire-Resistance-Rated Thermally Insulating and Sealing System Having a F-Rating of 120 Min for Use with Curtain Wall Structures,” issued February 12, 2019
- Technology Synopsis: This patent, related to the '566 Patent, also targets dynamic sealing of safing slots. The solution involves a "first element" with a "cavity-shaped profile" (e.g., a steel pan) which receives a "second element" of thermally resistant material. A separate "third element" of insulation is positioned in the safing slot itself. This compartmentalized design is intended to provide a robust, fire-resistant seal in dynamic curtain wall systems ('759 Patent, Abstract; col. 7:55-8:4).
- Asserted Claims: Independent Claim 1 is asserted (Compl. ¶109).
- Accused Features: Defendant’s "Zero" Spandrel System is accused of infringement. The complaint maps the system's "five-sided box pan" to the "first element" with a "cavity-shaped profile" and its insulation to the claimed second and third elements (Compl. ¶¶119-122, 126, 130).
III. The Accused Instrumentality
Product Identification
- The complaint names several products and systems sold by Defendant, including: 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. ¶¶17, 29, 49, 62, 82).
Functionality and Market Context
- The accused products are components of "perimeter fire barrier systems" used to fill and seal the safing slot between a concrete floor slab and the exterior curtain wall of a building (Compl. ¶19). As depicted in product brochures, these systems typically involve metal brackets (e.g., L-brackets, U-brackets, or pans) that are fastened to the curtain wall's framing (mullions) to support safing insulation (e.g., mineral wool). This assembly is often sealed with a fire-resistant spray coating (Compl. ¶¶20-22, 48-49). The complaint highlights marketing materials that claim these systems "accelerate the installation of curtain wall insulation," suggesting they are positioned in the market as solutions that improve construction efficiency (Compl. ¶¶48, 61). An annotated diagram from a product brochure shows the general arrangement of these components in an installed state (Compl. ¶20, Ex. 6).
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 Perimeter Fire Barrier System includes mullions, transoms, and vision glass, which constitute the "Facade" fastened to the building's concrete floor/ceiling. | ¶21 | col. 6:14-16 |
| 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 safing insulation mounted between the facade and the concrete floor. | ¶22 | col. 6:17-20 |
| a protective layer which covers the fire. protection element at least partly, | The system includes a layer of SpecSeal® Safing Spray or Fast Tack® that covers the safing insulation. A diagram in the complaint depicts this spray as a red layer over the insulation. (Compl. ¶23, Ex. 6). | ¶23 | col. 6:61-65 |
| 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 includes safing insulation and a "curtain wall anchor" alleged to be a self-supporting angle profile with two flanges. | ¶¶24-25 | col. 2:20-22 |
| 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 of the anchor bears on the safing insulation. | ¶¶26-27 | col. 2:22-25 |
| wherein the protective layer comprises an elastic material. | The SpecSeal® Safing Spray is described as a "latex-based elastomeric coating." | ¶28 | col. 4:60-63 |
- Identified Points of Contention:
- Scope Questions: A central question may be whether a component marketed as a "curtain wall anchor," potentially a standard structural part, meets the definition of the claimed "self-supporting angle profile." The analysis will likely focus on whether the anchor is configured to perform the specific dual functions recited in the claim: being "fastened to the facade element" and simultaneously "bear[ing] on the insulating layer" for fire protection purposes, as described in the patent.
- Technical Questions: The complaint alleges the SpecSeal® spray is an "elastic material." The properties of this "latex-based elastomeric coating" will be subject to factual discovery to determine if it meets the functional and material requirements of the claim.
'653 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| ...at least one self-supporting angle profile with two flanges disposed at an angle relative to one another, | The L-Bracket Perimeter Fire Barrier System includes an L-bracket alleged to be a self-supporting angle profile with two flanges. A product diagram shows this L-bracket with annotations for a first and second flange. (Compl. ¶53, Ex. 6). | ¶53 | col. 2:42-45 |
| wherein a first flange...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 first flange of the L-bracket is shown with screw holes for fastening to the facade's mullion, and the second flange extends into the safing slot, parallel to the insulation. | ¶¶54-56 | col. 2:46-52 |
| the second flange having a first surface and a second surface opposing the first surface, the first surface and the second surface of the second flange unfastened to the insulating layer, | The system is assembled by inserting "self-locking fasteners" through the insulation and into a receiving slot on the first flange, leaving the second flange itself with no direct fasteners connecting it to the insulation. | ¶¶57-58 | col. 2:56-61 |
| and wherein the first flange and the second flange are made of at least one metal. | Defendant's product data sheet identifies the material of the accused L-brackets as "Galvanized steel." | ¶59 | col. 2:40-42 |
- Identified Points of Contention:
- Scope Questions: The primary dispute will likely center on the negative limitation "unfastened to the insulating layer." Defendant may argue that the overall assembly, where fasteners pass through the insulation and lock into the bracket, creates a "fastened" condition in a functional sense, even if the second flange itself is not directly attached. The court's construction of "unfastened to" will be critical.
- Technical Questions: Evidence will be needed to confirm the precise method of assembly for the accused systems. The infringement theory relies on the allegation that installers are instructed to secure the insulation by passing fasteners through it into the first flange, a factual assertion that will be explored in discovery.
V. Key Claim Terms for Construction
The Term: "self-supporting angle profile" ('629 and '653 Patents)
- Context and Importance: This term defines the core component of the invention in the first two patents. Practitioners may focus on this term because its construction will determine whether Defendant’s standard "L-Brackets" or "curtain wall anchors" fall within the scope of what the patent describes as a specific, functional fire-protection element.
- Intrinsic Evidence for a Broader Interpretation: The specification notes that while an L-shaped profile is preferred, the invention can be embodied as a "special profile" and is not limited to equal legs, suggesting some flexibility in its form ('629 Patent, col. 3:7-13).
- Intrinsic Evidence for a Narrower Interpretation: The patent consistently describes the profile in the functional context of solving a specific fire-protection problem: stiffening the facade while simultaneously bearing on and securing the insulation ('629 Patent, col. 2:51-65). This purpose-driven language may support a narrower construction that requires the component to be structured to achieve these specific fire-protection functions, potentially distinguishing it from a generic structural part.
The Term: "unfastened to the insulating layer" ('653 Patent)
- Context and Importance: This negative limitation is a key distinguishing feature of the '653 Patent's claims. The infringement case hinges on the factual assertion that Defendant’s brackets are not directly attached to the insulation. The definition of "unfastened" is therefore dispositive.
- Intrinsic Evidence for a Broader Interpretation (Favoring Plaintiff): The plain meaning of "unfastened" suggests the absence of a direct connection (e.g., screws, glue, or clips) between the second flange and the insulation. The patent describes the second flange as being disposed "behind or underneath the insulating layer," a positional relationship that does not imply direct attachment ('653 Patent, col. 3:36-38). This supports an interpretation where the method of securing the overall assembly is irrelevant, so long as the second flange itself is not directly affixed to the insulation.
- Intrinsic Evidence for a Narrower Interpretation (Favoring Defendant): A party could argue that in the context of the entire assembly, "unfastened" should be construed functionally. If the insulation is held immobile against the second flange by compression and by fasteners passing through it elsewhere, one might argue it is functionally "fastened," even without a direct mechanical link to that specific flange. The patent’s emphasis on preventing the insulation from "dropping down or falling over" could be used to support a construction focused on the functional outcome of immobilization, rather than the specific means of attachment ('653 Patent, col. 3:39-41).
VI. Other Allegations
- Indirect Infringement: The complaint exclusively pleads indirect infringement by active inducement under 35 U.S.C. § 271(b) (Compl. ¶¶15, 44, 80, 108). The basis for inducement is the allegation that Defendant manufactures and sells the component parts of the infringing systems while actively encouraging infringement through "instructions for use, documentation, online technical support and videos, marketing, and other information" that instruct customers and end-users how to assemble the components in an infringing manner (Compl. ¶¶17, 46).
- Willful Infringement: The complaint alleges willful infringement based on Defendant's alleged knowledge of the patents-in-suit and their infringement since "at least as early as September 2022," when Plaintiff sent a detailed notice letter with enclosed claim charts. The complaint alleges that Defendant's continued inducement after receiving this notice constitutes willful and deliberate infringement (Compl. ¶¶18, 47, 83, 111).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of component equivalence: Can standard, multi-purpose construction components, such as the accused "L-brackets" and "curtain wall anchors," be found to meet the claims' requirements for a "self-supporting angle profile," which the patents describe as a specific element designed to solve a complex fire-protection problem? The outcome will depend on whether the court construes the term broadly by its shape or narrowly by its claimed functions within the facade assembly.
- A second key question will be one of claim scope for a negative limitation: How will the court construe the term "unfastened to the insulating layer" in the '653 Patent? The case may turn on whether this term is given its plain structural meaning (no direct fasteners) or a broader functional meaning (not held in a fixed state), and whether the accused assembly—where fasteners pass through the insulation to attach to a different part of the same bracket—falls inside or outside that scope.
- Finally, for the '566 and '759 patents, a central evidentiary question will be one of system-level correspondence: Does the Defendant's "Zero" Spandrel System, when installed according to instructions, actually create the specific multi-component structures required by the claims—such as a "cavity-shaped profile" containing a distinct "second element" or a "plate" with sufficient "moment of inertia"—or is there a fundamental mismatch in the technical operation and configuration of the accused system versus the patented invention?