DCT
1:23-cv-00244
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
- Case Identification: 1:23-cv-00244, D. Del., 06/26/2024
- Venue Allegations: Venue is alleged to be proper in the District of Delaware because Defendant is a Delaware corporation.
- Core Dispute: Plaintiff alleges that Defendant’s fire-rated pathway products for building penetrations infringe four patents related to devices for passing pipes and cables through building openings.
- Technical Context: The technology concerns firestopping devices that are essential for maintaining the fire-resistance ratings of walls and floors where cables, pipes, or other utilities create openings.
- Key Procedural History: The complaint highlights a significant litigation history between the parties, including a prior lawsuit involving the two earliest patents-in-suit. Plaintiff alleges that during the prosecution of the two later patents-in-suit, it submitted Defendant's own invalidity arguments and prior art from the earlier case to the U.S. Patent and Trademark Office, and that the examiner allowed the patents after considering these materials. This procedural background suggests Plaintiff is preemptively asserting the robustness of its patents against Defendant’s anticipated invalidity defenses.
Case Timeline
| Date | Event |
|---|---|
| 2013-12-09 | Priority Date for ’088, ’946, ’822, and ’585 Patents |
| 2019-05-21 | U.S. Patent No. 10,295,088 Issued |
| 2022-02-08 | U.S. Patent No. 11,242,946 Issued |
| 2022-09-22 | Prior Litigation (22-cv-1248) Filed by Plaintiff |
| 2022-09-22 | Application for ’822 Patent Filed |
| 2023-01-12 | Application for ’585 Patent Filed |
| 2023-02-14 | U.S. Patent No. 11,578,822 Issued |
| 2023-06-30 | Defendant Served Invalidity Contentions in Prior Litigation |
| 2023-09-14 | Defendant Served Invalidity Contentions in Prior Litigation |
| 2024-02-27 | U.S. Patent No. 11,913,585 Issued |
| 2024-06-26 | First Amended Complaint Filed in Present Case |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,295,088 - “Device for Passing Pipes or Cables Through an Opening in a Building,” Issued May 21, 2019
The Invention Explained
- Problem Addressed: The patent describes the challenge of sealing openings in walls and ceilings for pipes and cables to prevent the spread of fire. Traditional methods, such as filling openings with a sealing compound, are described as labor-intensive, time-consuming, and ill-suited for applications where cables may need to be added or changed later. (’088 Patent, col. 1:21-51).
- The Patented Solution: The invention proposes a pre-fabricated device with a sleeve-like housing that can be installed in the opening. The device contains two main components: a "curtain" (e.g., brushes) that acts as a convection barrier against fumes, and separate flexible strips coated with an intumescent material that expands when heated by a fire to completely seal the passage channel. (’088 Patent, col. 2:6-20, Fig. 1). This design aims to provide a reliable firestop that also allows for the easy installation and repositioning of cables. (’088 Patent, col. 1:52-65).
- Technical Importance: This technology sought to simplify firestop installations by replacing manual, multi-step sealing processes with a self-contained, pre-engineered unit that adapts to the presence of cables. (’088 Patent, col. 2:38-44).
Key Claims at a Glance
- The complaint asserts at least independent claim 1. (Compl. ¶41).
- The essential elements of claim 1 include:
- A sleeve-like housing with a passage channel open at both ends.
- A "curtain" that extends inwards from a wall of the channel.
- A "flexible material" coated with intumescent material, mounted in the channel and "spaced from the curtain."
- The curtain is specified to be made of an inorganic or organic fiber and to bend when a pipe or cable is passed through.
- The complaint reserves the right to assert additional claims. (Compl. ¶51).
U.S. Patent No. 11,242,946 - “Device for Passing Pipes or Cables Through an Opening in a Building,” Issued February 8, 2022
The Invention Explained
- Problem Addressed: Similar to the '088 Patent, this patent addresses the need for an easy-to-install firestopping device that allows for flexible positioning of pipes and cables. (’946 Patent, col. 1:36-50).
- The Patented Solution: The invention is a device comprising a housing with a "curtain" at a first location and a "fire-retardant material" at a second location. The claims focus on the functionality of these components in an installed state: the curtain "moves" to accommodate an object, and the fire-retardant material "curves" to at least partially surround the object. (’946 Patent, col. 5:23-33). This language emphasizes the dynamic behavior of the sealing components.
- Technical Importance: This patent builds on the concept of an adaptive firestop by defining the invention through the specific movements and deformations of its internal components when in use. (’946 Patent, col. 2:45-53).
Key Claims at a Glance
- The complaint asserts at least independent claim 1. (Compl. ¶73).
- The essential elements of claim 1 include:
- A housing with a channel and open ends.
- A "curtain" extending into the channel at a first location.
- A "fire-retardant material" extending into the channel at a second location.
- Functionally, in an installed state, the curtain "moves" to accommodate an object, and the fire-retardant material "curves in an axial direction" to partially surround the object.
- The housing is coupled to an opening in a barrier.
- The complaint reserves the right to assert additional claims. (Compl. ¶83).
U.S. Patent No. 11,578,822 - “Device for Passing Pipes or Cables Through an Opening in a Building,” Issued February 14, 2023
- Technology Synopsis: This patent claims a firestopping device featuring two brushes on opposite walls with bristles that mesh to close the passage channel. It also requires a first "intumescent material" that curves to surround an object when installed. The claims further specify that the device has first and second flanges designed to terminate flush with the wall or ceiling surfaces. (’822 Patent, Claim 8).
- Asserted Claims: The complaint asserts at least independent claim 8. (Compl. ¶104).
- Accused Features: The complaint alleges that the accused product’s housing, opposing brushes, intumescent pads, and "oversized wall plates" infringe the elements of claim 8. (Compl. ¶¶109-115).
U.S. Patent No. 11,913,585 - “Device for Passing Pipes or Cables Through an Opening in a Building,” Issued February 27, 2024
- Technology Synopsis: This patent claims a device with two meshing brushes that form a "convection barrier." It distinctly requires a "first material" and a "second material" (both intumescent) mounted on opposite walls. A key limitation is that the first material "does not directly contact the second material" before an object passes through the channel. (’585 Patent, Claim 1).
- Asserted Claims: The complaint asserts at least independent claim 1. (Compl. ¶138).
- Accused Features: The complaint alleges that the accused product’s housing, brushes, and upper and lower intumescent pads infringe, specifically noting that foam blocks prevent the pads from contacting each other, thereby meeting the non-contact limitation. (Compl. ¶¶143-151).
III. The Accused Instrumentality
- Product Identification: The accused product is the EZ Path® Series 44+ Fire Rated Pathway (the "EZ Path Pathway"). (Compl. ¶43).
- Functionality and Market Context: The complaint describes the EZ Path Pathway as a device designed to allow cables to pass through fire-rated walls and floors without requiring traditional firestopping methods. (Compl. ¶44). It allegedly features a "built-in fire and smoke sealing system that automatically adjusts to the amount of cables installed." (Compl. ¶44). The device is alleged to consist of an orange galvanized steel housing, internal brushes, and gray intumescent pads. (Compl. ¶¶46-48). The complaint includes an annotated cutaway view of the accused device, identifying the "Intumescent pads" and "Oversized wall plates." (Compl. ¶49, Exhibit 17).
IV. Analysis of Infringement Allegations
’088 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a sleeve-like housing comprising a passage channel that is open at opposite ends; | The accused product includes an "orange galvanized steel pathway" which constitutes a sleeve-like housing with an open channel. | ¶46 | col. 2:7-9 |
| a curtain extending inwards from a wall of the passage channel; | The accused product's "two brushes on the left and/or right side of the housing" are alleged to be the claimed curtain. | ¶47 | col. 2:11-15 |
| a flexible material mounted in the passage channel at a location spaced from the curtain and coated with an intumescent material, | The "gray intumescent pads" in the accused product are alleged to be the claimed flexible material with an intumescent coating. | ¶48 | col. 2:15-18 |
| wherein the device is suitable for passing a pipe or cable through an opening in a building and the curtain at least partially bends in a through-direction of the passage channel when a pipe or cable is in the device, | The product is marketed for passing cables, and an included image allegedly shows the brushes bending to accommodate cables. A labeled diagram shows how the components conform to the cable load. | ¶49 | col. 2:21-24 |
| and wherein the curtain comprises at least one selected from the group consisting of an inorganic fiber and an organic fiber. | The complaint alleges this element is met, implicitly identifying the brush bristles as the required fiber. | ¶50 | col. 2:26-28 |
’946 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a housing comprising a channel with open ends; | The accused product's "orange galvanized steel pathway" is alleged to be the claimed housing. | ¶77 | col. 5:24 |
| a curtain extending into the channel at a first location; | The "two brushes on the left and/or right side of the housing" are alleged to be the claimed curtain. | ¶78 | col. 5:25 |
| and a fire-retardant material extending into the channel at a second location, | The "gray intumescent pads" are alleged to be the claimed fire-retardant material. | ¶79 | col. 5:26-27 |
| wherein the curtain moves within the channel in an installed state, the curtain moving to accommodate passage of an object through the channel, | An included image allegedly shows the brushes (curtain) moving to accommodate the passage of cables. | ¶80 | col. 5:28-31 |
| and wherein the fire-retardant material curves in an axial direction within the channel and at least partially surrounds the object in the channel in the installed state, | The intumescent pads are alleged to curve around and partially surround cables passed through the device. The complaint provides an image showing the pads conforming to a cable load. | ¶81 | col. 5:31-33 |
| the housing coupled to an opening in a barrier. | Images allegedly show the accused product's wall plates coupling the housing to an opening in a wall. | ¶82 | col. 5:33-34 |
- Identified Points of Contention:
- Scope Questions: The infringement analysis for the ’088 Patent raises the question of whether the accused product's brushes and pads are properly characterized as a distinct "curtain" and a "flexible material," respectively, or if they constitute a single, integrated sealing mechanism that falls outside the claim's scope. For the ’946 Patent, a key question may be whether the simple deflection of the accused product's brush bristles constitutes "mov[ing] within the channel" as required by the claim.
- Technical Questions: A factual question for the ’088 Patent will be whether the accused product’s intumescent pads are located at a position "spaced from the curtain" (the brushes) in a manner consistent with the patent's teachings. The complaint's visual evidence, showing the pads adjacent to the brushes, will be central to this inquiry. (Compl. ¶48, Exhibit 17).
V. Key Claim Terms for Construction
Term from the ’088 Patent: "curtain"
- The Term: "curtain"
- Context and Importance: This term is critical because claim 1 requires both a "curtain" and a separate "flexible material" that is "spaced from the curtain." The Plaintiff equates the accused product's brushes with the "curtain" and its intumescent pads with the "flexible material." Practitioners may focus on this term because Defendant could argue that the term requires more than just bristles, or that the brushes and pads in its product are not sufficiently "spaced" to meet the claim, potentially seeking a narrow construction that requires significant separation.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself does not restrict the "curtain" to a specific structure, only that it "extend[s] inwards from a wall" and is made of a fiber. (’088 Patent, col. 5:17-18, 5:25-28).
- Evidence for a Narrower Interpretation: The specification consistently refers to the "brushes 36, 38" when describing the "curtain," and distinguishes them from the "flexible strips 42" of intumescent material. (’088 Patent, col. 4:5-12). A party might argue this linkage limits the term "curtain" to the specific brush embodiments shown.
Term from the ’946 Patent: "moves within the channel"
- The Term: "moves within the channel"
- Context and Importance: The infringement reading for the '946 Patent hinges on this functional language. The complaint alleges that the accused product's brushes "move" to accommodate cables. Practitioners may focus on this term because its construction will determine the type and degree of movement required for infringement—is passive deflection sufficient, or is a more active or substantial displacement implied?
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term is not explicitly defined, which may support giving it a plain and ordinary meaning that encompasses any form of movement, including the bending or deflection of flexible bristles.
- Evidence for a Narrower Interpretation: The specification of the parent '088 patent, incorporated by reference, describes how the "bristles 40 deflect laterally" and "endeavor to move... away from each other." (’088 Patent, col. 4:15-19, 4:30-32). A party could argue this context suggests a more complex movement than simple bending.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement for all four patents-in-suit. Inducement is primarily based on allegations that Defendant provides instructions, brochures, and marketing materials that encourage and instruct customers and end users to assemble and use the EZ Path Pathway in an infringing manner. (Compl. ¶¶58, 89, 123, 159). Contributory infringement is based on allegations that the accused product is a material part of the patented invention, is especially made or adapted for an infringing use, and is not a staple article of commerce with substantial non-infringing uses. (Compl. ¶¶66, 97, 131, 167).
- Willful Infringement: While not pleaded as a separate count, the complaint alleges Defendant has had knowledge of the '088 and '946 patents since at least September 2022 due to prior litigation. (Compl. ¶¶57, 88). Knowledge of the '822 and '585 patents is alleged from service of complaints in the present action. (Compl. ¶¶122, 158). The allegations of continued infringement despite this knowledge form the basis for potential claims of willful infringement.
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be the legal effect of the patents' prosecution history: to what extent does the examiner's alleged consideration of Defendant’s own prior-asserted invalidity arguments during the prosecution of the ’822 and ’585 patents strengthen their presumption of validity and potentially limit the defenses available to the Defendant?
- The infringement dispute will likely turn on a question of component mapping and claim scope: does the accused product's system of brushes and intumescent pads correspond to the distinct elements of a "curtain" and a separate "flexible material" as required by the '088 patent, or will claim construction reveal a mismatch between the accused device and the claimed architecture?
- A key evidentiary question will concern the evolution of the patent claims: how will the nuanced differences in claim language across the four related patents—from the structural requirements of the '088 patent to the more functional language of the '946 patent and the specific "convection barrier" and non-contacting elements of the later patents—impact the infringement analysis for the single accused product?