DCT
1:24-cv-04928
Milwaukee Electric Tool Corp v. Klein Tools Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Milwaukee Electric Tool Corporation (Delaware) and Keter Home and Garden Products Ltd. (Israel)
- Defendant: Klein Tools, Inc. (Delaware)
- Plaintiff’s Counsel: Morgan, Lewis & Bockius LLP
- Case Identification: 1:24-cv-04928, N.D. Ill., 06/13/2024
- Venue Allegations: Venue is alleged to be proper in the Northern District of Illinois because Defendant Klein Tools maintains its corporate headquarters and a regular and established place of business in the district, and because the alleged acts of infringement are occurring there.
- Core Dispute: Plaintiffs allege that Defendant’s MODbox™ line of modular storage products infringes three patents related to coupling mechanisms for detachably connecting utility containers.
- Technical Context: The technology concerns interlocking modular tool storage systems, a significant market segment for professional tradespeople who require durable, customizable, and portable organization for tools and equipment.
- Key Procedural History: The complaint alleges that Defendant had knowledge of the asserted patents at least as early as May 28, 2024, when it was served with a complaint for patent infringement in a separate case involving the same patents (Case No. 1:24-cv-04284, N.D. Ill.). This prior notice serves as the primary basis for Plaintiffs' allegations of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2016-05-02 | Earliest Priority Date Claimed by '026, '952, and '167 Patents |
| 2022-06-21 | U.S. Patent No. 11,365,026 Issued |
| 2023-10-24 | U.S. Patent No. 11,794,952 Issued |
| 2024-04-09 | U.S. Patent No. 11,952,167 Issued |
| 2024-05-28 | Defendant allegedly served with complaint in prior related case |
| 2024-06-13 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,365,026 - "Utility Assembly and Coupling Mechanism"
- Patent Identification: U.S. Patent No. 11,365,026, "Utility Assembly and Coupling Mechanism," issued June 21, 2022.
The Invention Explained
- Problem Addressed: The patent describes a need for a "coupling mechanism for readily detachably attaching any first article to any second article," where the articles are "utility modules" such as storage containers, tool boxes, and organizers ('026 Patent, col. 1:49-53). This addresses the challenge of creating a secure but easily reconfigurable system for stacking and transporting modular containers.
- The Patented Solution: The invention is a coupling system featuring a "male coupler" on one container and a "female coupler" on another ('026 Patent, col. 1:53-57). The female coupler has a depressed area with at least one "locking rib," while the male coupler has a corresponding "locking tongue" ('026 Patent, col. 1:57-65). The containers are connected by sliding the tongue into engagement with the rib, and a separate locking latch prevents further sliding displacement, securing the assembly ('026 Patent, col. 2:1-9). This design aims to prevent both vertical and horizontal separation once locked.
- Technical Importance: This mechanical approach provides a standardized interface for modular components, allowing users to build customized tool stacks from various containers that can be securely transported as a single unit (Compl. ¶8).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶27).
- The essential elements of independent claim 1 include:
- A first container with a "first coupler" (comprising sidewalls, a back wall, and a rib), a lid, and a "toggle locking latch".
- A second container with a "second coupler" (comprising a tongue), a lid, and a "toggle locking latch".
- A "sliding path defined by the rib and the tongue" for engagement.
- A "locking latch arresting location" on one container.
- A "locking latch" on the other container that engages the arresting location to limit sliding displacement.
- The complaint also asserts dependent claims 2-5 and 7-11 (Compl. ¶27).
U.S. Patent No. 11,794,952 - "Utility Assembly and Coupling Mechanism"
- Patent Identification: U.S. Patent No. 11,794,952, "Utility Assembly and Coupling Mechanism," issued October 24, 2023.
The Invention Explained
- Problem Addressed: Like the '026 Patent, the '952 Patent is directed to a coupling mechanism for modular utility containers, addressing the need for secure and reconfigurable stacking ('952 Patent, col. 1:26-31).
- The Patented Solution: The '952 Patent discloses a similar male/female coupler system based on a sliding rib-and-tongue engagement, but its claims add specific features related to the container's external structure ('952 Patent, col. 1:53-65). Independent claim 1 explicitly requires the inclusion of corner bumpers on the container, which define outer surfaces that face away from the front and side faces of the container, suggesting an emphasis on durability and protection of the container's corners ('952 Patent, col. 24:30-40).
- Technical Importance: This invention builds upon the core coupling mechanism by integrating protective elements into the claimed structure, which is a key consideration for tool storage systems used in demanding work environments.
Key Claims at a Glance
- The complaint asserts independent claims 1, 9, and 17 (Compl. ¶44, ¶49).
- The essential elements of independent claim 1 are similar to claim 1 of the '026 Patent, with the addition of:
- A second container comprising a front face, a first side face, and an opposing second side face.
- A "first corner bumper" coupled between the front and first side faces.
- A "second corner bumper" coupled between the front and second side faces.
- The complaint also asserts dependent claims 2-8, 10-16, and 18-23 (Compl. ¶44).
U.S. Patent No. 11,952,167 - "Utility Assembly and Coupling Mechanism"
- Patent Identification: U.S. Patent No. 11,952,167, "Utility Assembly and Coupling Mechanism," issued April 9, 2024.
- Technology Synopsis: The '167 Patent describes a similar modular container assembly but adds limitations directed at specific stacking configurations. The claims require a "first female coupler" on the lid of a first container and a "male coupler" on the bottom of a second container, and further specify a dimensional relationship where the second container is "approximately one-half the width axis of the first container" ('167 Patent, col. 20:10-14). This patent appears tailored to systems that allow smaller, half-width containers to be securely mounted on top of larger, full-width containers.
- Asserted Claims: Claims 1-9, 11, and 13-16 are asserted, including independent claims 1 and 15 (Compl. ¶61, ¶66).
- Accused Features: The complaint accuses Klein Tools' half-width component boxes, such as the "54808MB MODBox™ Tall Component Box, Half Width," of infringing the '167 patent when used in an assembly with full-width toolboxes (Compl. ¶63).
III. The Accused Instrumentality
Product Identification
- The accused products are components of Defendant’s Klein Tools MODbox™ modular storage system, including the Rolling Toolbox, Medium Toolbox, Small Toolbox, various full- and half-width component boxes, a tool bag, and a cooler (Compl. ¶24).
Functionality and Market Context
- The complaint alleges the MODbox™ system is advertised as a "modular System with locking components" that allows users to "[e]asily interchange products to customize and mobilize with vertical and side locking components" (Compl. ¶22, ¶28). The system is marketed as a customizable tool storage solution where different containers can be stacked and locked together to form a "container assembly" (Compl. ¶29). The complaint provides a screenshot from Klein Tools' "Buildverse" website, which allows customers to digitally construct and purchase custom MODbox™ assemblies, illustrating the system's intended modular use (Compl. ¶34, p. 11).
IV. Analysis of Infringement Allegations
Although the complaint references claim chart exhibits that were not provided with the filing, the narrative allegations and visual evidence support the following summary of the infringement theories.
'026 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a first container comprising: a first coupler extending from a first face...the first coupler comprising two sidewalls, a back wall, and a rib... | The bottom MODbox™ unit in a stack serves as the first container, which has female coupler points on its top face (or lid). | ¶29 | col. 16:25-36 |
| a lid pivotally attached to the first container; and a toggle locking latch... | The MODbox™ toolboxes include hinged lids and front-mounted latches that secure the lids in a closed position. | ¶29 | col. 16:25-29 |
| a second container comprising: a second coupler extending from a second face...the second coupler comprising a tongue... | The top MODbox™ unit in a stack serves as the second container, which has male coupler points (tongues) on its bottom face. | ¶29 | col. 16:47-53 |
| wherein the first and second couplers...engage each other when the first and second containers are slid with respect to each other along a sliding path defined by the rib and the tongue; | The MODbox™ components are connected by placing the top unit onto the bottom unit and sliding it backward, causing the male and female couplers to interlock. | ¶28 | col. 17:21-27 |
| a locking latch arresting location...and a locking latch...positionable in a locked position engaging the locking latch arresting location thereby limiting sliding displacement... | The MODbox™ system includes a locking mechanism that prevents the top unit from sliding forward and disengaging from the bottom unit once connected. | ¶28 | col. 16:41-46 |
'952 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| [Coupler, lid, and latch elements as above] | [Functionality of MODbox™ couplers, lids, and latches as described above] | ¶45-¶46 | col. 1:49-68 |
| a first corner bumper coupled to the second container between the front face and the first side face... | The MODbox™ toolboxes are constructed with prominent, reinforced corners that function as bumpers. | ¶46 | col. 5:61-64 |
| a second corner bumper coupled to the second container between the front face and the second side face... | The MODbox™ toolboxes have matching bumpers on the opposing front corner. The complaint includes a photograph of stacked MODbox™ units where these corner features are visible (Compl. ¶29, p. 10). | ¶46 | col. 5:61-64 |
- Identified Points of Contention:
- Scope Questions: The analysis may turn on the construction of "toggle locking latch." A central question will be whether the latching mechanism on the MODbox™ products performs the specific over-center locking action implied by the term "toggle," or if it is a different type of latch, potentially placing it outside the scope of the claim.
- Technical Questions: A key factual dispute may arise over the precise geometry and interaction of the interlocking parts. For example, does the MODbox™ system's connection rely on a "sliding path defined by the rib and the tongue" as claimed, or does it achieve interlocking through a different mechanical action or structure? The complaint's evidence, such as videos showing "quick removal and reconfiguration," will be scrutinized to determine if the demonstrated functionality matches the claimed method of engagement (Compl. ¶31).
V. Key Claim Terms for Construction
The Term: "toggle locking latch"
Context and Importance: This term appears in the independent claims of both the '026 and '952 patents. Its construction is critical because "toggle" implies a specific type of mechanical linkage that locks through an over-center action. Defendant may argue its product uses a different, non-infringing latch mechanism (e.g., a simple friction clasp or snap latch).
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification does not provide an explicit definition of the term, which may support an argument that it should be given its plain and ordinary meaning, potentially encompassing any latch that secures the lid firmly.
- Evidence for a Narrower Interpretation: The patent figures depict a specific latch design (e.g., ’026 Patent, FIG. 1A, element 29). A party could argue that these consistent depictions limit the term to the over-center clasp-style latch shown in the preferred embodiments.
The Term: "a rib extending away from the back wall in a first direction"
Context and Importance: This phrase from claim 1 of the '026 patent defines the core structure of the female coupler. The infringement analysis will depend heavily on whether the accused MODbox™ products contain a structure that meets this geometric and directional limitation.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The general description discusses the goal of preventing "sliding displacement" and "vertical separation," which could support construing the "rib" element functionally to cover any structure that achieves that result in cooperation with a tongue ('026 Patent, col. 3:9-15).
- Evidence for a Narrower Interpretation: The detailed description is quite specific, stating that the rib extends from a "rear portion of the depressed locking location... towards a front face of the container" ('026 Patent, col. 16:33-36). This language, along with figures like 3B showing the specific orientation, may support a narrower construction requiring that exact configuration.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement by citing Defendant’s advertisements and website, including the "Buildverse" tool, which allegedly instruct customers on how to assemble the MODbox™ components in an infringing "container assembly" (Compl. ¶33-¶34). It further alleges contributory infringement on the basis that the MODbox™ products are especially designed for this infringing use and are not staple articles of commerce suitable for substantial non-infringing use (Compl. ¶38).
- Willful Infringement: The willfulness allegation is based on alleged knowledge of the patents as of May 28, 2024, the date Defendant was purportedly served with a complaint in a prior, related lawsuit asserting the same patents (Compl. ¶39, ¶56, ¶73). The complaint alleges that despite this knowledge, Defendant continued its infringing conduct willfully and deliberately.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can claim terms describing specific mechanical components, such as "toggle locking latch," be construed broadly enough to read on the corresponding features of the accused MODbox™ system, or do the specific embodiments in the patents limit the claims to a narrower interpretation that the accused products do not meet?
- A second central issue will be one of structural and functional correspondence: does the physical design and operation of the MODbox™ interlocking mechanism map onto the claim limitations requiring engagement along a "sliding path defined by the rib and the tongue," or is there a fundamental difference in the way the accused products connect that places them outside the claims' scope?
- A key question for damages will be the impact of the prior lawsuit notice: Plaintiffs' allegation that Defendant was served with a complaint on the same patents just weeks before this case was filed raises a significant question of whether Defendant's post-notice conduct was objectively reckless, potentially exposing it to enhanced damages for willful infringement.