DCT
2:23-cv-02192
Danco Inc v. Kissler & Co Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Danco, Inc. (Delaware)
- Defendant: Kissler & Co., Inc. (New Jersey)
- Plaintiff’s Counsel: John H. Choi & Associates LLC; Thomas | Horstemeyer, LLP
- Case Identification: [Danco, Inc.](https://ai-lab.exparte.com/party/danco-inc) v. [Kissler & Co., Inc.](https://ai-lab.exparte.com/party/kissler-and-co-inc), 2:23-cv-02192, D.N.J., 04/19/2023
- Venue Allegations: Venue is alleged to be proper in the District of New Jersey because the Defendant, a New Jersey corporation, resides and maintains a regular and established place of business in the district.
- Core Dispute: Plaintiff alleges that Defendant’s universal tub and shower trim kits infringe a patent related to a universal trim kit system that uses interchangeable inserts to fit various underlying valve models.
- Technical Context: The technology addresses the consumer plumbing repair market, aiming to simplify the replacement of shower and tub fixtures (trim) without requiring the complex and costly replacement of the in-wall valve assembly.
- Key Procedural History: The complaint alleges that Plaintiff has marked its own patented products with the patent number since 2016 and that Defendant has had actual knowledge of the patent since at least 2016, which may form the basis for the willfulness allegations. No prior litigation or administrative proceedings are mentioned in the complaint.
Case Timeline
| Date | Event |
|---|---|
| 2009-04-01 | ’720 Patent Priority Date |
| 2015-06-09 | ’720 Patent Issue Date |
| 2016 | Plaintiff begins marking products with patent no. |
| 2016 | Alleged date of Defendant's first knowledge of patent |
| 2023-04-19 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,051,720 - "Universal Trim Kit"
- Patent Identification: U.S. Patent No. 9,051,720, "Universal Trim Kit," issued June 9, 2015. (Compl. ¶3; ’720 Patent, p. 1).
The Invention Explained
- Problem Addressed: The patent's background section notes that when consumers wish to replace their tub or shower trim, they often do not know the specific make or model of the underlying valve, and different original equipment manufacturer (OEM) valves have varying configurations for attaching the trim. (Compl. ¶16; ’720 Patent, col. 1:11-15).
- The Patented Solution: The invention is a "universal trim kit" designed to solve this compatibility problem. It consists of a standard decorative outer plate (an escutcheon) combined with a "plurality of interchangeable inserts." Each insert is designed with a unique combination of valve opening size, shape, and/or fastener hole positions to match a specific OEM valve body, allowing a single kit concept to adapt to many different pre-existing plumbing installations. (Compl. ¶16; ’720 Patent, Abstract; col. 2:56-65).
- Technical Importance: This approach allows for cosmetic upgrades to bathroom fixtures without requiring a plumber to replace the valve inside the wall, a significantly more invasive and expensive process. (Compl. ¶16; ’720 Patent, col. 1:11-15).
Key Claims at a Glance
- The complaint asserts infringement of at least claim 2 of the '720 Patent, an independent claim. (Compl. ¶25, ¶31). It also references claim 1 in its contributory infringement allegations. (Compl. ¶28).
- The essential elements of independent claim 2 are:
- A universal trim kit for a bathtub or shower valve, comprising an escutcheon and a plurality of interchangeable inserts each comprising a valve opening.
- At least one valve opening is sized or shaped differently from at least one other valve opening.
- At least two of the inserts have two spaced-apart first fastener holes alignable with holes on the valve to secure the insert.
- The fastener holes on at least one insert are in different locations than the fastener holes on at least one other insert, allowing each insert to align with the specific valve that matches its valve opening.
- The complaint does not explicitly reserve the right to assert dependent claims, but its general references to "one or more claims" suggest this possibility. (Compl. ¶9).
III. The Accused Instrumentality
Product Identification
- The accused products are "various universal tub and shower trim kits for Moen® and Delta® tub/shower faucets" (Compl. ¶7). These include products sold under Defendant's own brand and the "Everbilt™" brand, with specific examples being the "Delta-Delex Shower/Tub Rebuild Kit," "Moen Shower/Tub Rebuild Kit," "Everbilt Tub & Shower Trim Kit for Moen®," and "Everbilt Tub & Shower Trim Kit for Delta®" (Compl. ¶22).
Functionality and Market Context
- The complaint alleges these products function as replacement trim kits, allowing a consumer to update the look of a shower or tub without replacing the in-wall valve. (Compl. ¶16).
- The accused kits are alleged to be "universal" and are marketed for compatibility with major faucet brands like Moen and Delta. (Compl. ¶7, ¶22).
- The products are alleged to be sold through major nationwide retailers, including Home Depot, Lowe's, and Walmart. (Compl. ¶23).
IV. Analysis of Infringement Allegations
The complaint provides a narrative summary of infringement allegations for claim 2, referencing but not including detailed claim chart exhibits. (Compl. ¶32-33). No probative visual evidence provided in complaint.
’720 Patent Infringement Allegations
| Claim Element (from Independent Claim 2) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A universal trim kit comprising an escutcheon and a plurality of interchangeable inserts each comprising a valve opening | The Accused Products include a universal trim kit comprising an escutcheon and a plurality of interchangeable inserts each comprising a valve opening. | ¶33a | col. 3:30-33 |
| wherein at least one valve opening is sized or shaped differently from at least one other valve opening | The interchangeable inserts in the Accused Products have at least one valve opening sized or shaped differently from at least one other valve opening. | ¶33b | col. 3:33-35 |
| wherein at least two of the plurality of interchangeable inserts each comprises two spaced-apart first fastener holes alignable with holes on the bathtub or shower valve so that the insert may be secured to the valve | At least two of the interchangeable inserts in the Accused Products have two spaced-apart first fastener holes alignable with holes on the bathtub or shower valve so that the insert may be secured to the valve. | ¶33c | col. 3:35-39 |
| wherein the two spaced-apart first fastener holes on at least one of the interchangeable inserts are disposed in locations different from the two spaced-apart first fastener holes on at least one other interchangeable insert, so that the first fastener holes on each interchangeable insert are alignable with the holes on the bathtub or shower valve that fits with the size and shape of the valve opening in such interchangeable insert | The two spaced-apart first fastener holes on at least one of the interchangeable inserts are disposed in locations different from the two spaced-apart first fastener holes on at least one other interchangeable insert, so that the first fastener holes on each interchangeable insert are alignable with the holes on the bathtub or shower valve that fits with the size and shape of the valve opening in such interchangeable insert. | ¶33d | col. 4:1-9 |
Identified Points of Contention
- Scope Questions: The complaint accuses kits "for Moen®" and separate kits "for Delta®." (Compl. ¶22). This raises the question of whether a kit marketed for a single brand family (e.g., Moen) can be considered a "universal trim kit" as claimed, or if the claim requires a single product to include inserts for multiple, different OEM brands.
- Technical Questions: The complaint’s infringement allegations closely track the claim language. (Compl. ¶33). A central factual question will be whether discovery shows that the accused products, as sold, actually contain a "plurality of interchangeable inserts" that have both differently sized/shaped openings and differently located fastener holes, as required by the combination of limitations in claim 2.
V. Key Claim Terms for Construction
The Term: "universal trim kit"
Context and Importance
The definition of this term is fundamental to the scope of infringement. Practitioners may focus on this term because the complaint identifies accused products by specific brands (e.g., "Everbilt Tub & Shower Trim Kit for Moen®") (Compl. ¶22). The defense may argue that such a product is brand-specific, not "universal," if it does not contain inserts for other brands like Delta.
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: The patent title is "Universal Trim Kit," and the specification discusses solving the problem of "different OEM valves" generally, which could support a construction where a kit is "universal" if it fits multiple valve models, even if they are all from within one brand family. ('720 Patent, p. 1; col. 1:8-10).
- Evidence for a Narrower Interpretation: The patent’s abstract and summary of the invention describe the kit as comprising an escutcheon "in combination with a plurality of interchangeable inserts." ('720 Patent, Abstract; col. 1:26-28). This language may suggest that the "kit," as a single commercial item, must contain these multiple different inserts to achieve its "universal" character.
The Term: "plurality of interchangeable inserts"
Context and Importance
This term is intertwined with "universal trim kit." Its construction will determine whether an accused product must be sold with more than one type of insert in the package to infringe. This is critical because if Defendant sells kits containing only the insert(s) needed for a single brand, it may argue this limitation is not met.
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: The claim language does not explicitly state that the "plurality" of inserts must be packaged and sold together. An interpretation could be that a product line of interchangeable parts available to a consumer could constitute a "kit" system.
- Evidence for a Narrower Interpretation: The word "kit" itself, along with the claim's description of the kit "comprising" an escutcheon and a plurality of inserts, suggests the components are provided together as a single unit for sale. ('720 Patent, col. 3:31-32).
VI. Other Allegations
Indirect Infringement
- The complaint alleges both inducement and contributory infringement.
- Inducement is alleged based on Defendant providing "installation instructions" and other materials that direct customers to use the accused products in an infringing manner. (Compl. ¶27, ¶39).
- Contributory infringement is alleged on the basis that the accused products were "especially made for" infringing use, are essential to practicing the invention, and have "no substantial non-infringing use." (Compl. ¶28, ¶47-49).
Willful Infringement
- Willfulness is alleged based on "information and belief" that Defendant has had "actual knowledge" of the ’720 Patent since "at least as early as 2016." (Compl. ¶36, ¶38). This allegation of pre-suit knowledge is supported by Plaintiff's claim that it has continuously marked its own products with the patent number since 2016. (Compl. ¶20).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: does the term "universal trim kit," as used in the patent, require a single product package to contain inserts compatible with multiple, distinct OEM valve families (e.g., both Moen and Delta), or can a product marketed as a "Kit for Moen" that fits multiple Moen valve types satisfy the claim?
- A key evidentiary question will be one of product constitution: do the accused kits, as actually sold to consumers, contain a "plurality of interchangeable inserts" that meet all the specific functional requirements of claim 2, including variations in both valve opening and fastener hole location?
- A central factual dispute will likely be the state of knowledge: what evidence can Plaintiff provide to prove its assertion that Defendant had "actual knowledge" of the ’720 patent prior to the lawsuit, which is a prerequisite for its claims of willful infringement?