DCT
1:25-cv-01307
Bocci Design & Mfg Inc v. Prado America LLC
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Bocci Design & Manufacturing, Inc. (Canada)
- Defendant: Prado America, LLC (Delaware); Intertek Testing Services NA, Inc. (New York)
- Plaintiff’s Counsel: Fisherbroyles LLP
- Case Identification: 1:25-cv-01307, D. Del., 01/12/2026
- Venue Allegations: Plaintiff alleges venue is proper in the District of Delaware because Defendant Prado is a Delaware corporation and both defendants are alleged to have conducted infringing business activities within the district.
- Core Dispute: Plaintiff alleges that Defendant’s flush-mount electrical outlets, and the instructions provided for their installation, infringe a patent related to methods for installing electrical components without a visible external cover plate.
- Technical Context: The technology addresses the aesthetic design of interior spaces by enabling the installation of electrical outlets to be flush with a wall surface, eliminating the traditional, visible cover plate.
- Key Procedural History: The complaint alleges that Plaintiff communicated with Defendant Prado regarding product safety and compliance issues beginning in April 2025. During an April 18, 2025, video call, a Prado representative allegedly expressed surprise that the discussion did not include a "patent claim," which Plaintiff proffers as evidence of pre-suit knowledge of its patent rights.
Case Timeline
| Date | Event |
|---|---|
| 2007-03-30 | U.S. Patent No. 8,232,482 Earliest Priority Date |
| 2012-07-31 | U.S. Patent No. 8,232,482 Issued |
| 2024-02-01 | Prado allegedly began marketing Accused Products as NEC compliant |
| 2024-08-28 | Prado allegedly received Intertek certification for an iteration of the Accused Products |
| 2024-11-20 | Plaintiff's expert allegedly filed a Non-Conforming Product Complaint with Intertek |
| 2025-04-08 | Plaintiff and Defendant Prado allegedly began written communications |
| 2025-04-18 | Video call held between Plaintiff and Defendant Prado representatives |
| 2025-08-11 | Installation video for Accused Products allegedly posted to YouTube and Instagram |
| 2025-09-02 | Date of availability for certain Prado installation instructions |
| 2026-01-12 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,232,482 - *"Method and Apparatus for Finished Installation of Electrical Outlet Box Without Use of External Cover Plate"*
- Patent Identification: U.S. Patent No. 8232482, "Method and Apparatus for Finished Installation of Electrical Outlet Box Without Use of External Cover Plate," issued July 31, 2012 (the "’482 Patent").
The Invention Explained
- Problem Addressed: The patent’s background section describes conventional electrical outlet installations as a long-standing aesthetic issue in construction due to the "necessary evil" of a visible cover plate, which creates "visual distractions in otherwise attractively finished interiors" (Compl. ¶¶26-27; ’482 Patent, col. 1:53-68).
- The Patented Solution: The invention is a method for installing an electrical component, such as an outlet, so that it appears seamlessly integrated into a wall. This is achieved by placing a layer of wall surface material (e.g., drywall compound) over a junction box and a specialized plate assembly, blending it with the surrounding wall surface. The process leaves only the functional or "operative portion" of the electrical component visible, creating a flush, continuous surface without an external cover plate (’482 Patent, Abstract; col. 2:31-42). Figure 1 of the patent illustrates a cross-section of an installed outlet box where wallboard tape (40) and mud are applied over a plate member (30) to create this flush appearance (’482 Patent, Fig. 1).
- Technical Importance: The patented method provides a solution for achieving a minimalist aesthetic in architectural design, allowing electrical components to be integrated into various wall surfaces without the visual disruption of a cover plate (Compl. ¶29).
Key Claims at a Glance
- The complaint asserts independent claim 1 and reserves the right to assert other claims (Compl. ¶¶38, 44).
- Independent Claim 1 (Method):
- placing said electrical component in a junction box in said wall so that only an operative portion of said electrical component is located at a surface of said wall;
- placing a layer of wall surface material over said junction box while leaving exposed said operative portion of said electrical component; and
- conforming said layer of wall surface material with a surrounding area of said surface of said wall so as to form a flush, substantially uniform surface that extends over and around said junction box and said surrounding area of said surface of said wall;
- so that when finished said layer of wall surface material appears substantially level and continuous with said surface of said wall and substantially only said operative portion of said electrical component is visibly distinguishable at said surface of said wall.
III. The Accused Instrumentality
Product Identification
- Prado's "Unifit model 9000-0003" or "Unifit hardwired" electrical outlets (the "Unifit Hardwired Products") (Compl. ¶2).
Functionality and Market Context
- The complaint describes the Unifit Hardwired Products as electrical outlets designed for flush-mount installation to compete directly with Plaintiff's "22 System" products (Compl. ¶5). The core of the infringement allegation is that Prado provides installation instructions and marketing materials, including online videos, that instruct customers and installers to install the products in a manner that allegedly practices every step of claim 1 of the ’482 Patent (Compl. ¶¶39, 41). Exhibit D-6.5 is cited as a screen capture from an installation video allegedly showing the Unifit Hardwired Products being installed in an infringing manner (Compl. ¶41). The complaint further alleges that the products "can only be installed" in a way that infringes (Compl. ¶43).
IV. Analysis of Infringement Allegations
’482 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| placing said electrical component in a junction box in said wall so that only an operative portion of said electrical component is located at a surface of said wall | Prado's instructions allegedly direct users to install the Unifit Hardwired Products, an electrical component, in a junction box so that only its operative portion is at the wall's surface. | ¶45 | col. 2:36-39 |
| placing a layer of wall surface material over said junction box while leaving exposed said operative portion of said electrical component | Prado's instructions allegedly direct users to place wall surface material over the junction box while leaving the operative part of the outlet exposed. | ¶45 | col. 2:39-42 |
| conforming said layer of wall surface material with a surrounding area of said surface of said wall so as to form a flush, substantially uniform surface that extends over and around said junction box and said surrounding area of said surface of said wall | Prado's instructions allegedly direct users to conform the wall material with the surrounding wall to create a flush, uniform surface over and around the junction box. | ¶45 | col. 11:6-14 |
| so that when finished said layer of wall surface material appears substantially level and continuous with said surface of said wall and substantially only said operative portion...is visibly distinguishable | The result of following Prado's instructions is allegedly a finished installation where the wall surface is level and continuous, with only the operative portion of the outlet visible. | ¶45 | col. 2:49-53 |
Identified Points of Contention
- Scope Questions: A central dispute may concern the meaning of "substantially uniform surface." The analysis may question what degree of smoothness and continuity is required by this term and whether the result of installing the accused product meets that standard.
- Technical Questions: Since this is a method claim, a key question for the court will be whether the Unifit Hardwired Products can be installed in a commercially viable, non-infringing manner. The complaint's assertion that the products "can only be installed" in an infringing way suggests this will be a primary technical and factual dispute (Compl. ¶43).
V. Key Claim Terms for Construction
The Term: "operative portion of said electrical component"
Context and Importance
- This term defines the boundary between what is covered by wall material and what remains exposed. Its construction will be critical to determining if the accused installation method leaves the correct part of the device "exposed" as required by the claim.
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: The specification provides a functional definition: "the interface or other portion of the electrical component that must be exposed at the wall surface in order for the component to perform its intended function, such as an outlet opening...a toggle or button switch..." (’482 Patent, col. 10:1-6). This could support an interpretation covering various functional interfaces.
- Evidence for a Narrower Interpretation: Figures in the patent, such as Figure 2 and Figure 5, consistently depict the "operative portion" as only the immediate face of the electrical receptacles, not any surrounding flange or structure. This may support a narrower construction limited to the specific parts a user interacts with.
The Term: "conforming said layer of wall surface material ... to form a flush, substantially uniform surface"
Context and Importance
- The definitions of "conforming," "flush," and "substantially uniform" are central to the claimed aesthetic outcome. Practitioners may focus on these terms because the infringement analysis depends on whether the accused installation method achieves this specific finished result.
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: The patent summary describes the step broadly as "blending the layer of fill material into the surface of the wall" (’482 Patent, col. 2:61-64), which could suggest any method that achieves a visually blended result.
- Evidence for a Narrower Interpretation: The detailed description repeatedly refers to applying "wallboard 'mud'" and "feathering" the edges to create a "smooth, virtually imperceptible mound" (’482 Patent, col. 11:6-14). This could support a narrower construction tied to specific techniques and materials common in drywall finishing.
VI. Other Allegations
Indirect Infringement
- The complaint alleges both inducement and contributory infringement against Prado.
- Inducement: The complaint alleges Prado actively induced infringement by providing customers with "installation instructions and marketing materials," including online videos, that instruct users on how to perform the allegedly infringing installation method (Compl. ¶¶39, 141). Knowledge is alleged based on pre-suit communications (Compl. ¶¶71, 143).
- Contributory Infringement: The complaint alleges the Unifit Hardwired Products were "especially made or especially adapted for use" in an infringing manner and are "not suitable for substantial noninfringing use" (Compl. ¶¶67, 151).
Willful Infringement
- The complaint alleges willful infringement based on pre-suit knowledge of the ’482 Patent. The primary factual basis cited is an April 18, 2025, video call in which a Prado representative allegedly asked, "You don't have a patent claim?", which Plaintiff contends demonstrates Prado's awareness of its patent rights (Compl. ¶¶71, 136).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of necessity and evidence: Does the evidence, particularly Prado's installation instructions and videos, direct users to perform every step of the claimed method, and are there any commercially practical, non-infringing ways to install the accused products?
- A second key question will be one of definitional scope: How will the court construe claim terms such as "operative portion" and "substantially uniform surface"? The outcome of this construction will likely determine whether the visual and functional result of installing the accused product falls within the boundaries of the patent's claims.
- Finally, a critical question for willfulness and enhanced damages will be one of intent: What was the context and significance of the alleged pre-suit conversation regarding a "patent claim," and does it establish that Prado acted with the requisite knowledge and intent to support a finding of willful infringement?