Victaulic Co v. Sigma Piping Products 2019 LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Victaulic Company (Delaware)
  • Defendant: Sigma Piping Products [2019], LLC (Delaware)
  • Plaintiff’s Counsel: Morris, Nichols, Arsht & Tunnell LLP; Pillsbury Winthrop Shaw Pittman LLP
• Case Identification: 1:25-cv-00448, D. Del., 04/11/2025
• Venue Allegations: Venue is alleged to be proper in the District of Delaware because the Defendant is a Delaware corporation and therefore resides in the district. The complaint also alleges that the Defendant conducts business and has committed infringing acts within the district.
• Core Dispute: Plaintiff alleges that Defendant’s STABIT Ridgid Coupling infringes three patents related to pre-assembled mechanical pipe couplings and their associated sealing members.
• Technical Context: The technology concerns mechanical couplings used to join pipe elements end-to-end, which are designed to simplify and expedite the installation process by being supplied in a pre-assembled state.
• Key Procedural History: The complaint notes that two of the patents-in-suit have been subject to post-grant validity challenges at the U.S. Patent and Trademark Office. U.S. Patent No. 8,733,799 was the subject of two petitions for Inter Partes Review (IPR) that the Patent Trial and Appeal Board (PTAB) declined to institute. U.S. Patent No. 8,646,165 was also the subject of two IPRs, which concluded with the PTAB issuing a certificate cancelling several claims but confirming the patentability of the asserted claims 7 and 15. The complaint also alleges that Plaintiff provided Defendant with pre-suit notice of infringement on April 3, 2025.

Case Timeline

Date	Event
2004-05-14	Earliest Priority Date ('799, '310, '165 Patents)
2014-02-11	Issue Date (U.S. Patent No. 8,646,165)
2014-05-27	Issue Date (U.S. Patent No. 8,733,799)
2017-08-08	Issue Date (U.S. Patent No. 9,726,310)
2019-10-11	IPR Certificate Issued ('165 Patent)
2025-04-03	Pre-Suit Notice of Infringement Sent to Defendant
2025-04-11	Complaint Filing Date

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

U.S. Patent No. 8,733,799 - "Combination Sealing Member and Pipe Couplings", issued May 27, 2014

The Invention Explained

• Problem Addressed: The patent describes the installation of conventional mechanical pipe couplings as a "tedious and time consuming" process that requires a technician to handle at least seven individual parts, and to completely disassemble and then reassemble the coupling on-site ('799 Patent, col. 1:56-62, col. 2:9-17).
• The Patented Solution: The invention is a combination of a coupling and a specially designed sealing member (i.e., a gasket). The sealing member is a flexible, resilient ring designed to be stiff enough to support the metal coupling segments in a pre-assembled, spaced-apart configuration ('799 Patent, col. 2:21-36). This allows a technician to install the coupling by inserting pipe ends directly into the pre-assembled unit, eliminating the need for on-site disassembly and reassembly. The sealing member also includes features such as conical lips and a central tongue to guide the pipe ends into place ('799 Patent, Fig. 3; col. 3:45-50).
• Technical Importance: This "installation-ready" or "pre-assembled" approach aimed to significantly reduce the time, effort, and potential for error in joining pipe systems in the field ('799 Patent, col. 2:13-20).

Key Claims at a Glance

• The complaint asserts independent claims 1 and 12, along with several dependent claims (Compl. ¶25).
• Independent Claim 1 recites a combination of pipe elements, a sealing member, and a coupling, where the sealing member includes:
  • a flexible, resilient ring with an inner surface to engage pipe elements and an outer surface to support coupling segments;
  • the outer surface having a diameter for supporting the segments in a "preassembled state" and in "spaced apart relation sufficient to allow said pipe elements to be axially inserted";
  • the coupling has segments joined end-to-end, which are initially supported on the ring and are then tightened to engage the pipe elements.
• Independent Claim 12 recites a sealing member for use with a pipe coupling, comprising:
  • a backwall forming a ring outer surface;
  • first and second sidewalls extending radially inwardly from the backwall;
  • first and second lips attached to the respective sidewalls;
  • a tongue attached to the backwall and positioned between the lips, for engaging the ends of the pipe elements.
• The complaint reserves the right to assert other claims, including dependent claims 2-4, 6, and 17 ('799 Patent, col. 6:22-38, col. 6:43-45, col. 7:1-8).

U.S. Patent No. 9,726,310 - "Combination Sealing Member and Pipe Couplings", issued August 8, 2017

The Invention Explained

• Problem Addressed: As a continuation of the application leading to the ’799 Patent, this patent addresses the same problem of inefficient and laborious installation of traditional pipe couplings (’310 Patent, col. 2:11-20).
• The Patented Solution: This invention also claims a pre-assembled coupling and seal combination. The claims focus on specific structural and geometric features of the coupling segments that facilitate the pre-assembled installation. One such feature is the inclusion of "cut-outs" at the ends of the coupling's arcuate surfaces, which provide additional clearance to allow pipe elements to be inserted more easily when the segments are in their pre-assembled state (’310 Patent, col. 5:50-54).
• Technical Importance: These geometric refinements are presented as further improving the ease of installation for pre-assembled couplings, potentially allowing for a more compact pre-assembled state and reducing the force needed for final tightening (’310 Patent, col. 5:48-54).

Key Claims at a Glance

• The complaint asserts independent claim 1, along with several dependent claims (Compl. ¶35).
• Independent Claim 1 recites a combination of pipe elements and a coupling, where the coupling includes:
  • a plurality of segments, each with oppositely disposed ends and a connection member;
  • a pair of "arcuate projections" on each segment;
  • an "arcuate surface" on each projection for engaging a groove in a pipe element;
  • a channel between the projections for receiving a seal;
  • a seal that supports the segments in spaced-apart relation to provide clearance for pipe insertion.
• The complaint reserves the right to assert other claims, including dependent claims 2, 4, 7, and 9 (’310 Patent, col. 6:33-46, col. 6:52-57).

U.S. Patent No. 8,646,165 - "Method of Securing Pipe Elements End to End", issued February 11, 2014

• Technology Synopsis: This patent claims the method of joining pipes using a pre-assembled, deformable coupling. The claimed method avoids prior art disassembly steps by having a user take a pre-assembled coupling, axially insert the pipe ends into it, and then tighten fasteners to draw the coupling segments together, thereby deforming them to conform to the pipe surfaces and create a secure joint (’165 Patent, Abstract; col. 2:22-41).
• Asserted Claims: Claims 7 and 15 are asserted. The complaint notes that these specific claims were confirmed as novel and nonobvious following Inter Partes Review proceedings that resulted in the cancellation of other claims of the patent (Compl. ¶¶ 18, 45).
• Accused Features: The accused infringement is the act of using the STABIT Ridgid Coupling to connect pipe elements in a manner that allegedly performs the steps of the claimed method, as instructed by Defendant’s promotional materials (Compl. ¶¶ 45, 48).

III. The Accused Instrumentality

Product Identification

The accused products are "all sizes of products sold as the STABIT Ridgid Coupling and any other models" that are covered by the patents-in-suit (Compl. ¶20).

Functionality and Market Context

The complaint alleges that the Accused Products are mechanical pipe couplings sold, offered for sale, and imported by the Defendant (Compl. ¶22). The core accused functionality is the product's use in a pre-assembled state, which allows installers to join pipe elements by "stabbing" them into the coupling without first disassembling it (Compl. ¶¶ 28, 38, 48). The complaint references a brochure for the STABIT Ridgid Coupling, attached as Exhibit G, which allegedly markets the product for this infringing use (Compl. ¶28). The complaint does not provide further detail for analysis of the product's market positioning or commercial importance.

IV. Analysis of Infringement Allegations

The complaint alleges that the Defendant's STABIT Ridgid Coupling infringes the patents-in-suit and references detailed claim charts, attached as Exhibits D, E, and F, which were not publicly available with the complaint. The infringement theory is summarized below in prose based on the allegations in the complaint.

'799 Patent Infringement Allegations

The complaint alleges that the STABIT Ridgid Coupling, when combined with pipe elements, infringes at least claims 1-4, 6, 12, and 17 of the ’799 Patent (Compl. ¶25). The core of the infringement theory appears to be that the accused coupling is sold as a pre-assembled unit, comprising coupling segments and a sealing member, where the sealing member supports the segments in a spaced-apart relationship sufficient to allow pipe ends to be inserted directly, thereby practicing the claimed combination (Compl. ¶¶ 25, 27-28). The complaint references marketing literature for the accused product, attached as Exhibit G, which allegedly instructs users to "'stab' 'it' (the pipe element) into the coupling," supporting the allegation of pre-assembled installation (Compl. ¶28).

'310 Patent Infringement Allegations

The complaint alleges that the STABIT Ridgid Coupling infringes at least claims 1, 2, 4, 7, and 9 of the ’310 Patent (Compl. ¶35). The narrative theory is that the accused coupling embodies the claimed structural features, such as "arcuate projections" and a seal that holds the segments apart to provide clearance for pipe insertion (Compl. ¶¶ 35, 37-38). The infringing use is again supported by reference to the product's promotional literature allegedly instructing an installation method consistent with the patent's teachings (Compl. ¶38).

Identified Points of Contention

• Functional Questions: A central question may be whether the sealing member in the accused product functions to support the metal coupling segments in a stable, spaced-apart "preassembled state" as claimed, or if it is a passive gasket that does not provide the structural support required by the claims. The evidence regarding the seal's material properties, dimensions, and stiffness will be critical.
• Scope Questions: The dispute may involve the proper construction of terms like "arcuate projections" (’310 Patent) and whether the internal geometry of the accused coupling falls within that scope. The analysis may depend on whether these terms are limited to the specific shapes and configurations shown in the patent's figures.

V. Key Claim Terms for Construction

• The Term: "a ring outer surface ... for supporting said segments in a preassembled state ... in spaced apart relation" (from '799 Patent, Claim 1).
• Context and Importance: This limitation is the technical heart of the "installation-ready" invention. The outcome of the infringement analysis for the ’799 Patent may depend on whether the accused product's seal is found to perform this active "supporting" function. Practitioners may focus on this term because it distinguishes the invention from prior art where a gasket is simply captured between segments that must be manually held in place during assembly.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification describes the ring outer surface as having a diameter "sized to support the segments in spaced apart relation" (’799 Patent, col. 2:32-35), which could suggest a functional definition based on achieving the result of spaced-apart support.
  • Evidence for a Narrower Interpretation: The patent states the ring has "sufficient stiffness to maintain the coupling segments in spaced apart relation through shipping and handling" (’799 Patent, col. 4:37-40). A defendant could argue this implies a specific, measurable level of rigidity that its own product's seal does not possess.

VI. Other Allegations

Indirect Infringement

The complaint alleges both induced and contributory infringement for all three patents. The inducement claim is based on allegations that the Defendant's promotional literature, user manuals, and marketing (e.g., Exhibit G) actively instruct and encourage customers to use the STABIT Ridgid Coupling in a manner that directly infringes, particularly the method claims of the ’165 Patent (Compl. ¶¶ 27-28, 37-38, 47-48). The contributory infringement claim is based on the allegation that the accused coupling is a material part of the invention, is not a staple article of commerce, and has no substantial non-infringing use (Compl. ¶¶ 29, 39, 49).

Willful Infringement

The complaint alleges that the Defendant's infringement has been and continues to be willful. This allegation is based on the Defendant's alleged knowledge of the patents-in-suit since at least its receipt of a detailed notice letter from the Plaintiff on April 3, 2025, which purportedly included claim charts demonstrating the infringement (Compl. ¶¶ 23, 33, 43, 53).

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

1. A key evidentiary question will be one of functional performance: does the accused STABIT coupling's sealing member possess the specific size, stiffness, and geometry required by the claims to perform the active function of "supporting" the metal coupling segments in a stable, pre-assembled state, or is it a passive gasket whose function falls outside the claim scope?
2. The case will likely involve a dispute over structural interpretation: do the internal features of the accused coupling meet the specific definitions of claimed elements like "arcuate projections" (from the ’310 patent), or will the Defendant argue for a narrower construction limited to the patent's specific embodiments, creating a non-infringement defense?
3. For the '165 method patent, a central issue will be the impact of the prior Inter Partes Review: while the complaint asserts claims that the USPTO confirmed as patentable, the litigation will test whether the installation method taught and encouraged by the Defendant for its product practices every step of those surviving, and now scrutinized, method claims.