3:10-cv-00513
Ford v. Hubbell Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Anthony J. Ford, Lois Hess, and Kay Klausner ("Relators") on behalf of the United States of America
- Defendant: Hubbell Incorporated (Connecticut) and Hubbell Power Systems, Inc. (Delaware)
- Plaintiff’s Counsel: The Cates Law Firm, L.L.C.
- Case Identification: 3:10-cv-00513, S.D. Ill., 04/29/2011
- Venue Allegations: Venue is based on allegations that Defendants conduct substantial, continuous, and systematic business in the Southern District of Illinois through the sale of their products.
- Core Dispute: Relators bring this qui tam action alleging that Defendants violated the false patent marking statute, 35 U.S.C. § 292, by advertising and marking products with expired patent numbers for the purpose of deceiving competitors and the public.
- Technical Context: The patents and products relate to equipment for electrical power transmission and distribution systems, such as conductors, insulators, and hardware.
- Key Procedural History: This First Amended Complaint was filed pursuant to a court order. The action is brought as a qui tam case, meaning the Relators are suing on behalf of the U.S. government to recover penalties for the alleged false marking.
Case Timeline
| Date | Event |
|---|---|
| 1966-12-30 | U.S. Patent No. 3,378,631 (’631 Patent) Filing/Priority Date |
| 1968-02-19 | U.S. Patent No. 3,513,248 (’248 Patent) Filing/Priority Date |
| 1968-04-16 | '631 Patent Issued |
| 1970-05-19 | '248 Patent Issued |
| 1972-02-29 | U.S. Patent No. 3,791,683 (’683 Patent) Filing/Priority Date |
| 1974-02-11 | U.S. Patent No. 3,898,372 (’372 Patent) Filing/Priority Date |
| 1976-01-02 | U.S. Patent No. 4,015,073 (’073 Patent) Filing/Priority Date |
| 1978-01-05 | U.S. Patent No. 4,183,686 (’686 Patent) Filing/Priority Date |
| 1982-05-27 | U.S. Patent No. 4,459,722 (’722 Patent) Filing/Priority Date |
| 1986-12-30 | '631 Patent Expired |
| 1988-02-19 | '248 Patent Expired |
| 1992-02-29 | '683 Patent Expired |
| 1994-02-11 | '372 Patent Expired |
| 1996-01-02 | '073 Patent Expired |
| 1998-01-05 | '686 Patent Expired |
| 2002-05-27 | '722 Patent Expired |
| 2010-06-28 | Date of Alleged False Marking in Defendants' "on-line" catalog |
| 2011-04-29 | First Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 3,378,631 - "CONDUCTOR WITH SELF-DAMPING CHARACTERISTICS", Issued April 16, 1968
The Invention Explained
- Problem Addressed: The patent describes how overhead electrical transmission lines are prone to wind-induced vibrations ("aeolian vibration" and "galloping"), which can cause wear, metal fatigue at support points, and other destructive effects (Compl. Ex. 1; ’631 Patent, col. 1:36-54). Conventional conductors with concentrically round wires have poor self-damping properties because the layers bear against each other with high radial forces, leading to wear at point contacts (Compl. Ex. 1; ’631 Patent, col. 1:55-70).
- The Patented Solution: The invention is a multi-wire electrical conductor constructed with at least two spiral layers of wires that are physically separated by an annular gap (Compl. Ex. 1; ’631 Patent, Fig. 1). The wires within each layer have specific cross-sections, such as truncated sectors, which allow them to lock together circumferentially under tension, maintaining the layer's shape and the gap between layers (Compl. Ex. 1; ’631 Patent, col. 3:1-12). This design replaces high radial forces between layers with circumferential forces within each layer, allowing for inter-wire friction to dissipate vibrational energy and reduce wear (Compl. Ex. 1; ’631 Patent, col. 4:13-17).
Key Claims at a Glance
- The complaint does not assert any specific claims for infringement analysis, as this is a qui tam action for false marking.
U.S. Patent No. 3,513,248 - "ENCLOSURE FOR PAD MOUNTED ELECTRICAL EQUIPMENT AND THE LIKE", Issued May 19, 1970
The Invention Explained
- Problem Addressed: The patent notes that prior art enclosures for ground-level electrical equipment were often made of metal (Compl. Ex. 2; ’248 Patent, col. 1:50-59). Such enclosures are heavy, costly, electrically conductive (posing a safety hazard if an internal circuit faults to the enclosure wall), and susceptible to corrosion (Compl. Ex. 2; ’248 Patent, col. 1:50-63).
- The Patented Solution: The invention provides an enclosure molded from a lightweight, electrically non-conductive, and corrosion-free material such as glass fiber reinforced polyester resin (Compl. Ex. 2; ’248 Patent, Abstract). The housing is designed for structural rigidity with an upwardly tapered shape, an arched top wall, and molded reinforcing ribs (Compl. Ex. 2; ’248 Patent, col. 2:50-65). It also features lift-out doors that interlock with the housing to provide easy and maximum access to the interior equipment while preventing open seams (Compl. Ex. 2; ’248 Patent, Abstract).
Key Claims at a Glance
- The complaint does not assert any specific claims for infringement analysis.
U.S. Patent No. 3,791,683 - "SAFETY LOCK FOR ENCLOSURES", Issued February 12, 1974
Technology Synopsis
This patent relates to safety locks for enclosures, such as those for electrical equipment, designed to prevent unauthorized access (Compl. Ex. 3; ’683 Patent, col. 1:6-12). The solution involves a lock mechanism with a non-conventionally shaped bolt head that requires a special tool for operation, preventing tampering by children or unauthorized personnel using conventional tools (Compl. Ex. 3; ’683 Patent, Abstract).
Asserted Claims
No specific claims are asserted for infringement analysis.
Accused Features
The complaint alleges that Defendants' "POLE LINE HARDWARE ADAPTERS FOR BRACKET ARMS" were advertised in an online catalog with the number of the expired ’683 Patent (Compl. ¶156a, ¶157).
U.S. Patent No. 3,898,372 - "INSULATOR WITH RESIN-BONDED FIBER ROD AND ELASTOMERIC WEATHERSHEDS, AND METHOD OF MAKING SAME", Issued August 5, 1975
Technology Synopsis
The patent addresses the problem of heavy and brittle porcelain insulators used in power transmission lines (Compl. Ex. 4; ’372 Patent, col. 1:12-24). The invention provides a lightweight, high-strength insulator made of a central resin-bonded fiber rod surrounded by a series of individually formed elastomeric weathersheds, which are compressed together between metal end fittings (Compl. Ex. 4; ’372 Patent, Abstract).
Asserted Claims
No specific claims are asserted for infringement analysis.
Accused Features
The complaint alleges that Defendants' "Hi*Lite® XL Insulators" were advertised in an online catalog with the number of the expired ’372 Patent (Compl. ¶168a, ¶169).
III. The Accused Instrumentality
Product Identification
The complaint identifies multiple products advertised in connection with different expired patents. The lead products identified are the "SELF-DAMPING ALUMINUM CONDUCTOR STEEL REINFORCED ACSR/SD" (accused of being marked with the ’631 Patent) and "Pole Line Hardware - Adapters for Bracket Arms" (accused of being marked with the ’248 and ’683 Patents) (Compl. ¶132a, ¶144a, ¶156a).
Functionality and Market Context
The complaint does not describe the specific technical operation of the accused products. Instead, it alleges that the products were advertised for sale in Defendants' "on-line" catalog as recently as June 28, 2010, with an associated expired patent number (Compl. ¶133, ¶145, ¶157). A photocopy of the advertisement for the "ACSR/SD" product is referenced as Exhibit 28 (Compl. ¶132a). A photocopy of the advertisement for the "Adapters for Bracket Arms" is referenced as Exhibit 29 (Compl. ¶144a). The complaint alleges that by advertising these products with expired patent numbers, Defendants have benefited commercially and financially (Compl. ¶141, ¶153, ¶165).
IV. Analysis of Infringement Allegations
The complaint is a qui tam action for false marking under 35 U.S.C. § 292 and does not allege patent infringement under 35 U.S.C. § 271. Consequently, it does not contain allegations comparing claim elements of the patents-in-suit to accused functionalities.
V. Key Claim Terms for Construction
As the complaint alleges false marking rather than infringement, it does not raise any issues of claim construction. This section is therefore not applicable.
VI. Other Allegations
Allegations of Deceptive Intent
The complaint alleges that Defendants violated 35 U.S.C. § 292(a), which requires a "purpose of deceiving the public." The factual basis for this alleged intent includes assertions that Defendants are sophisticated business entities with extensive experience in patent procurement and licensing (Compl. ¶119). The complaint alleges Defendants have an in-house legal department and specifically name an in-house counsel, Jerry M. Presson, as the contact for patent correspondence and fee payment purposes (Compl. ¶120, Exs. 6A, 7A). It further alleges that Defendants knew or should have known their patents' expiration dates and were aware of their obligation to pay maintenance fees, the failure of which also leads to expiration (Compl. ¶123, ¶124). Based on this alleged knowledge, the complaint asserts that Defendants "knowingly and intentionally, with the intent to deceive, advertised and/or marked their products with the expired patents, with the conscious intent to deceive others" (Compl. ¶129).
VII. Analyst’s Conclusion: Key Questions for the Case
The case will likely turn on the statutory elements of false marking, raising two central questions for the court:
- A core issue will be one of statutory application: does advertising a product in an online catalog with an expired patent number, as alleged in the complaint, constitute marking an "unpatented article" for the purposes of 35 U.S.C. § 292?
- A key evidentiary question will be one of culpability: can the Relators present sufficient evidence to prove that Defendants acted with the "purpose of deceiving the public," as required by the statute, or can Defendants establish that any such marking was inadvertent or unintentional?