DCT

1:16-cv-05904

Superflex Ltd v. Hubbell Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:16-cv-05904, E.D.N.Y., 10/24/2016
  • Venue Allegations: Venue is based on the Plaintiff having a place of business within the judicial district and the Defendant allegedly transacting substantial business in the State of New York.
  • Core Dispute: Plaintiff seeks a declaratory judgment that its electrical device covers do not infringe Defendant's patent, and that the patent is invalid, following pre-suit infringement allegations from Defendant.
  • Technical Context: The technology concerns weatherproof "in-use" covers for outdoor electrical outlets, which are designed to protect the outlet from the elements even while a cord is plugged in.
  • Key Procedural History: The complaint states that this action was precipitated by a cease-and-desist letter from Hubbell dated August 3, 2016, alleging infringement, followed by a denial from Superflex and a subsequent reiteration of the demand by Hubbell, thereby creating an actual controversy for declaratory judgment.

Case Timeline

Date Event
2004-02-19 U.S. Patent No. 7,439,444 Priority Date
2008-10-21 U.S. Patent No. 7,439,444 Issue Date
2016-08-03 Hubbell sends letter to Superflex alleging infringement
2016-09-06 Superflex responds to Hubbell, denying infringement and invalidity
2016-09-29 Hubbell repeats its demand to Superflex
2016-10-24 Complaint Filing Date

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

U.S. Patent No. 7,439,444 - "Horizontal and Vertical In-Use Electrical Device Cover"

  • Patent Identification: U.S. Patent No. 7,439,444, "Horizontal and Vertical In-Use Electrical Device Cover," issued October 21, 2008.

The Invention Explained

  • Problem Addressed: The patent addresses the need for a single protective cover for outdoor electrical outlets that can be configured for use on outlets installed in either a vertical or horizontal orientation (’444 Patent, col. 1:32-41). Traditional covers were often designed for a single orientation, requiring different products for different installations (’444 Patent, col. 1:53-56).
  • The Patented Solution: The patent discloses several mechanical solutions to create a universally orientable cover. The invention described in Claim 1 utilizes a base and a lid, each having hinge apertures on both a long side and a short side. A single "removable pin" can be inserted through the corresponding apertures on the long sides for a vertical pivot axis, or removed and re-inserted through the apertures on the short sides for a horizontal pivot axis, allowing one product to adapt to two orthogonal mounting configurations (’444 Patent, col. 9:15-29, col. 14:46-62).
  • Technical Importance: This approach allows a single stock-keeping unit (SKU) to serve multiple installation scenarios, which can simplify inventory management for manufacturers, distributors, and electrical contractors (’444 Patent, col. 6:38-41).

Key Claims at a Glance

  • The complaint states that Defendant Hubbell asserted infringement of at least claims 1 and 2 in pre-suit correspondence (Compl. ¶9).
  • Independent Claim 1 requires:
    • A "while-in-use cover lid" with a first lid hinge member aperture on a long side and a second lid hinge member aperture on a short side.
    • A "base" with a first base hinge member aperture on a long side and a second base hinge member aperture on a short side.
    • A "removable pin" that can be coupled with either the first set of lid/base apertures (for a first pivot axis) or the second set of lid/base apertures (for a second, orthogonal pivot axis).
  • Dependent claim 2 further specifies that the removable pin is made of plastic (’444 Patent, col. 14:63-64).

III. The Accused Instrumentality

Product Identification

The "SEALPROOF 1GWIUXD electrical device cover" (Compl. ¶9).

Functionality and Market Context

The complaint identifies the accused instrumentality by its product name but does not provide any technical description of its structure, features, or method of operation (Compl. ¶12). No details regarding its market position are alleged.

IV. Analysis of Infringement Allegations

The complaint, being an action for a declaratory judgment of non-infringement, does not contain specific allegations detailing how the accused product might infringe the ’444 Patent. Instead, it reports that Defendant Hubbell alleged infringement of at least claims 1 and 2 in pre-suit correspondence (Compl. ¶9) and states that Plaintiff Superflex denies these allegations and believes its product does not infringe (Compl. ¶12). Without affirmative infringement contentions from the patentee or a claim chart, a detailed element-by-element analysis of the infringement dispute is not possible from the complaint alone.

No probative visual evidence provided in complaint.

V. Key Claim Terms for Construction

  • The Term: "removable pin"

  • Context and Importance: This element is the lynchpin of Claim 1's mechanism for achieving reconfigurability. The core of the non-infringement dispute will likely turn on whether the accused product's connection mechanism constitutes a "removable pin" as claimed.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The claims do not define the pin's specific shape or material (beyond Claim 2 requiring plastic). A party might argue the term covers any distinct, elongated component that can be manually inserted and withdrawn to selectively create a pivot axis through corresponding apertures.
    • Evidence for a Narrower Interpretation: The specification describes the pin as being "selectively removed and inserted into the apertures created by the hinge members" (’444 Patent, col. 9:52-54) and shows it as a discrete, rod-like component (e.g., item 50 in FIG. 9, 14A, 14B). A party could argue that the term is limited to this type of separate component and does not read on other fastening mechanisms, such as integrated snap-fit hinges.

  • The Term: "hinge member aperture"

  • Context and Importance: The "apertures" on both the lid and base are the structures that must receive the "removable pin" to form the hinge. The construction of this term will define the type of structures on the accused product that must be identified to prove infringement.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: A party could argue "aperture" simply means an opening or hole, and that any corresponding holes on the lid and base of the accused product that align to receive a pin would satisfy this limitation.
    • Evidence for a Narrower Interpretation: The patent specification describes these features as "base hinge members" and "lid hinge members" that mate to form a "recess" for the pin (’444 Patent, col. 9:22-25). The drawings show these as structured, barrel-like components (e.g., items 21, 23, 25, 27 in FIGS. 11-13). Practitioners may focus on whether "aperture" requires such a substantive hinge structure or if a simple hole is sufficient.

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

  • A central question will be one of claim scope and technical equivalence: Does the mechanism used to connect the lid and base of the Superflex "SEALPROOF 1GWIUXD" cover meet the specific limitations of a "removable pin" that couples with "hinge member apertures" on orthogonal sides, as required by Claim 1? Or does the accused product employ a fundamentally different mechanical design to achieve reconfigurable mounting?
  • The case also presents a question of validity: Plaintiff seeks a declaration that the ’444 Patent is invalid for failing to meet the requirements of 35 U.S.C. §§ 102, 103, and/or 112 (Compl. ¶15). A key issue for the court will be whether the specific combination of elements in Claim 1 was obvious in light of the state of the art for electrical outlet covers at the time of the invention.