DCT

5:07-cv-00945

Pass & Seymour Inc v. Hubbell Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 5:07-cv-00945, N.D.N.Y., 01/12/2011
  • Venue Allegations: Plaintiff alleges venue is proper because Defendant imports, manufactures, and/or sells the accused ground fault circuit interrupters in the Northern District of New York.
  • Core Dispute: Plaintiff alleges that Defendant’s ground fault circuit interrupter products infringe nine patents related to the mechanical construction, electronic self-testing, and fault detection features of such devices.
  • Technical Context: Ground fault circuit interrupters (GFCIs) are electrical safety devices that automatically shut off an electric power circuit when they detect that current is flowing along an unintended path, such as through water or a person.
  • Key Procedural History: The operative pleading is a Second Amended Complaint, indicating prior amendments to the claims or parties in the case.

Case Timeline

Date Event
1994-10-24 U.S. Patent No. 5,594,398 Priority Date
1997-01-14 U.S. Patent No. 5,594,398 Issues
2000-02-17 U.S. Patent No. 6,873,158 Priority Date
2000-02-17 U.S. Patent No. 6,980,005 Priority Date
2000-11-21 U.S. Patent No. 7,283,340 Priority Date
2001-10-05 U.S. Patent No. 7,164,564 Priority Date
2003-07-28 U.S. Patent No. 7,212,386 Priority Date
2004-02-03 U.S. Patent No. 7,173,799 Priority Date
2004-07-28 U.S. Patent No. 7,154,718 Priority Date
2005-03-29 U.S. Patent No. 6,873,158 Issues
2005-12-27 U.S. Patent No. 6,980,005 Issues
2006-12-26 U.S. Patent No. 7,154,718 Issues
2007-01-16 U.S. Patent No. 7,164,564 Issues
2007-02-06 U.S. Patent No. 7,173,799 Issues
2007-05-01 U.S. Patent No. 7,212,386 Issues
2007-08-14 U.S. Patent No. 7,256,973 Issues
2007-10-16 U.S. Patent No. 7,283,340 Issues
2008-05-20 U.S. Patent No. 7,375,938 Issues
2011-01-12 Complaint Filing Date

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

U.S. Patent No. 5,594,398 - "Ground Fault Interrupter Wiring Device with Improved Moveable Contact System"

  • Patent Identification: U.S. Patent No. 5,594,398, "Ground Fault Interrupter Wiring Device with Improved Moveable Contact System," issued January 14, 1997.

The Invention Explained

  • Problem Addressed: The patent describes that in conventional GFCI devices, the springs used to bias the electrical contacts must be compressed or loaded during the assembly process, which complicates manufacturing by urging components toward undesired movement before assembly is complete (’398 Patent, col. 1:25-33).
  • The Patented Solution: The invention discloses a GFCI design where the biasing springs are placed into a compressed, operative condition only upon the final mating of the front and rear housing sections (’398 Patent, col. 1:40-47). This is achieved by having coil springs extend through openings in an internal separator, with their lower ends resting on the movable contact members and their upper ends being compressed by integral "towers" extending from the inside of the front housing section only when it is joined to the rear section (’398 Patent, col. 2:25-34).
  • Technical Importance: This approach simplifies automated assembly of GFCIs by ensuring that key internal components are not under spring tension until the final housing enclosure step.

Key Claims at a Glance

  • The complaint does not identify specific asserted claims but generally alleges infringement of at least one claim (Compl. ¶10). Independent claim 1 is representative of the invention’s core mechanical and electrical structure.
  • Claim 1 includes the following essential elements:
    • A housing defining an enclosed space.
    • At least one pair of fixed electrical terminals within the space.
    • A unitary, electrically conducting member with a pair of spaced contacts.
    • Mounting means permitting the conducting member to move between a circuit-making and a circuit-breaking position.
    • Biasing means urging the conducting member toward the circuit-breaking position.
    • Latching means for retaining the member in the circuit-making position.
    • Actuating means for releasing the latch in response to a fault condition.
  • The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 6,873,158 - "Circuit Protection Device With Half Cycle Self Test"

  • Patent Identification: U.S. Patent No. 6,873,158, "Circuit Protection Device With Half Cycle Self Test," issued March 29, 2005.

The Invention Explained

  • Problem Addressed: The patent notes that while regular manual testing of GFCIs is encouraged, few users perform such tests, creating a need for a GFCI with a self-test feature to ensure it remains operational (’158 Patent, col. 2:1-3).
  • The Patented Solution: The invention provides a circuit that automatically performs a self-test for its ability to detect a ground fault during every half-cycle of the AC power when the trip mechanism (an SCR) cannot conduct (’158 Patent, Abstract). This is accomplished by using a bypass circuit to introduce a simulated ground fault during the negative half-cycle of the AC power and then detecting a corresponding "resonant ring" from the solenoid; if this ring is absent, it indicates a failure, and the device is tripped on the subsequent positive half-cycle (’158 Patent, col. 3:19-53).
  • Technical Importance: This invention enables a GFCI to continuously and automatically verify its own protective functionality without requiring user interaction, enhancing safety for a device whose failure might otherwise go unnoticed.

Key Claims at a Glance

  • The complaint does not identify specific asserted claims (Compl. ¶10). Independent claim 1 is representative of the self-testing methodology.
  • Claim 1 includes the following essential elements:
    • A ground fault simulation circuit for producing a simulated ground fault during a first predetermined half-cycle of AC power.
    • A detector configured to detect the simulated ground fault during that half-cycle and transmit a detection signal.
    • An alarm circuit that generates an alarm signal if the detection signal is not generated within a predetermined period.
  • The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 6,980,005 - "Circuit Protection Device With Timed Negative Half-Cycle Self Test"

  • Patent Identification: U.S. Patent No. 6,980,005, "Circuit Protection Device With Timed Negative Half-Cycle Self Test," issued December 27, 2005.
  • Technology Synopsis: This patent discloses a self-testing GFCI that introduces a simulated fault signal during a first predetermined time interval but not during a subsequent second interval (’005 Patent, Abstract). This periodic, or timed, self-test is designed to enhance noise immunity and prevent false trips that could be caused by transient electrical noise, distinguishing it from a continuous half-cycle test (’005 Patent, col. 13:46-54).
  • Asserted Claims: The complaint does not specify asserted claims (Compl. ¶10). The patent includes independent claims 1, 9, 25, 36, 48, and 69.
  • Accused Features: The complaint accuses Hubbell's GFCI products of infringement, suggesting they incorporate a timed or periodic self-test functionality (Compl. ¶¶ 10-11).

U.S. Patent No. 7,164,564 - "Shorted SCR Lockout and Indication"

  • Patent Identification: U.S. Patent No. 7,164,564, "Shorted SCR Lockout and Indication," issued January 16, 2007.
  • Technology Synopsis: This patent addresses an end-of-life failure mode in GFCIs where the switching device (an SCR) shorts out, rendering the device unable to trip (’564 Patent, col. 1:55-60). The invention provides a monitoring circuit that detects this condition and generates a user-perceivable output signal (e.g., a blinking light) to indicate the failure, while also preventing the device from being reset (’564 Patent, Abstract).
  • Asserted Claims: The complaint does not specify asserted claims (Compl. ¶10). The patent includes independent claims 1, 15, 23, and 30.
  • Accused Features: The complaint accuses Hubbell's GFCI products of infringement, suggesting they include circuitry to detect and indicate an SCR failure and lock out the reset function (Compl. ¶¶ 10-11).

U.S. Patent No. 7,173,799 - "Protection Device with a Sandwiched Cantilever Breaker Mechanism"

  • Patent Identification: U.S. Patent No. 7,173,799, "Protection Device with a Sandwiched Cantilever Breaker Mechanism," issued February 6, 2007.
  • Technology Synopsis: This patent discloses a specific mechanical configuration for the circuit-interrupting contacts. The design features a "sandwiched" arrangement where a middle cantilever member with a dual contact is disposed between a fixed contact and an outer cantilever member (’799 Patent, Abstract). This mechanical structure is intended to provide reliable circuit interruption.
  • Asserted Claims: The complaint does not specify asserted claims (Compl. ¶10). The patent includes independent claims 1, 9, 23, 29, 34, and 62.
  • Accused Features: The complaint accuses Hubbell's GFCI products of infringement, suggesting they utilize the patented "sandwiched" mechanical contact structure (Compl. ¶¶ 10-11).

U.S. Patent No. 7,212,386 - "GFCI With Miswire Lockout"

  • Patent Identification: U.S. Patent No. 7,212,386, "GFCI With Miswire Lockout," issued May 1, 2007.
  • Technology Synopsis: This patent addresses the hazard of improperly wiring a GFCI by connecting the power source to the load terminals instead of the line terminals (’386 Patent, col. 2:1-7). The invention provides a wiring state detection circuit and a lockout mechanism that prevents the device from being reset if a miswiring condition is detected, thereby denying power until the wiring is corrected (’386 Patent, Abstract).
  • Asserted Claims: The complaint does not specify asserted claims (Compl. ¶10). The patent includes independent claims 1, 9, 16, and 23.
  • Accused Features: The complaint accuses Hubbell's GFCI products of infringement, suggesting they incorporate a miswire detection and lockout feature (Compl. ¶¶ 10-11).

U.S. Patent No. 7,256,973 - "Miswire Protection Switch Compression Spring"

  • Patent Identification: U.S. Patent No. 7,256,973, "Miswire Protection Switch Compression Spring," issued August 14, 2007.
  • Technology Synopsis: This patent discloses a mechanism to facilitate post-manufacture testing while preventing miswiring issues. It includes a switch element that is held in an open position during factory testing but is moved to a closed, operative position by an external stimulus (e.g., pressing a button) after testing is complete (’973 Patent, Abstract). This enables a miswire detection circuit without interfering with manufacturing tests.
  • Asserted Claims: The complaint does not specify asserted claims (Compl. ¶10). The patent includes independent claims 1 and 31.
  • Accused Features: The complaint accuses Hubbell's GFCI products of infringement, suggesting they include a user-actuated switch for enabling a miswire protection circuit (Compl. ¶¶ 10-11).

U.S. Patent No. 7,283,340 - "Electrical Wiring Device"

  • Patent Identification: U.S. Patent No. 7,283,340, "Electrical Wiring Device," issued October 16, 2007.
  • Technology Synopsis: This patent discloses a protective device with a wiring state detection circuit and a fault detection circuit (’340 Patent, Abstract). It appears to further refine the integration of miswire detection with standard fault protection, providing an indicator lamp that signals a miswired state or a tripped state, and a lockout feature that prevents reset if miswired (’340 Patent, col. 4:1-12).
  • Asserted Claims: The complaint does not specify asserted claims (Compl. ¶10). The patent includes independent claims 1 and 30.
  • Accused Features: The complaint accuses Hubbell's GFCI products of infringement, suggesting they incorporate the integrated miswire and fault detection and indication systems (Compl. ¶¶ 10-11).

U.S. Patent No. 7,375,938 - "Miswire Protection Switch Compression Spring"

  • Patent Identification: U.S. Patent No. 7,375,938, "Miswire Protection Switch Compression Spring," issued May 20, 2008.
  • Technology Synopsis: This patent is related to the '973 patent and further describes a GFCI device with a miswire protection circuit that is disarmed during post-manufacture testing and subsequently enabled by an external stimulus applied through an accessible housing feature (’938 Patent, col. 8:1-11). The invention focuses on making the device amenable to rigorous manufacturing tests while ensuring field safety.
  • Asserted Claims: The complaint does not specify asserted claims (Compl. ¶10). The patent includes independent claims 1, 9, 15, and 31.
  • Accused Features: The complaint accuses Hubbell's GFCI products of infringement, suggesting they incorporate a mechanism to enable a miswire circuit post-manufacturing (Compl. ¶¶ 10-11).

III. The Accused Instrumentality

Product Identification

The complaint identifies Hubbell-branded ground fault circuit interrupters, including Model Nos. GFR5252A, GFR5252WL, GFR5252WST, GF15IL, and GF5252ALL (Compl. ¶11).

Functionality and Market Context

The accused products are electrical devices for residential and commercial construction designed to prevent electrocution by automatically detecting a ground fault—an imbalance in electrical current—and cutting off power to an outlet (Compl. ¶7). The complaint alleges that Defendant imports, manufactures, and sells these devices in the United States (Compl. ¶5). The complaint does not provide further technical details on the specific operation or internal components of the accused products.

No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint does not provide sufficient detail for a claim-chart analysis. It broadly alleges that the accused Hubbell GFCI products infringe "at least one claim of at least one of the P&S patents" without specifying which claims are asserted or mapping any particular product feature to any claim element (Compl. ¶10). The infringement theory is based on the general allegation that the accused GFCI devices, by their nature and function, practice the inventions described in the portfolio of asserted patents, which cover various aspects of GFCI mechanical design, electronic self-testing, end-of-life failure detection, and miswire protection.

  • Identified Points of Contention: Given the lack of specificity in the complaint, the primary points of contention are broad and foundational.
    • Evidentiary Question: What evidence will be presented to demonstrate that the internal mechanical structures and electronic circuit operations of the accused Hubbell GFCIs correspond to the specific limitations of the asserted patent claims? For instance, what proof will show that the accused products perform a "half cycle self test" as claimed by the ’158 Patent?
    • Scope Question: How will the scope of broad claim terms such as "biasing means" (’398 Patent, Claim 1) or "alarm circuit" (’158 Patent, Claim 1) be defined? The analysis will question whether the particular components and logic used in the accused products fall within the construction of these terms as understood in the context of the patent specifications.

V. Key Claim Terms for Construction

  • The Term: "biasing means" (from ’398 Patent, Claim 1)

  • Context and Importance: The definition of this term is central to the infringement analysis of the ’398 Patent’s mechanical claims, as it governs the mechanism that forces the contacts into the open, circuit-breaking position. The dispute may turn on whether this term is limited to the specific spring-and-tower structure disclosed or covers any component that performs the biasing function.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: Claim 1 uses the functional language "biasing means urging said conducting member toward movement," which is characteristic of means-plus-function claiming and could encompass any structure that performs the stated function (’398 Patent, col. 13:38-40).
    • Evidence for a Narrower Interpretation: The specification repeatedly describes the biasing means as "coil springs" that are compressed between "buss bar members" and "towers" on the housing’s interior (’398 Patent, col. 2:14-34). This consistent description of a specific structure may be used to argue for a narrower construction limited to that embodiment or its structural equivalents.

  • The Term: "alarm circuit" (from ’158 Patent, Claim 1)

  • Context and Importance: This term is critical for determining what constitutes a legally sufficient response to a failed self-test under the ’158 Patent. The question may be whether an "alarm signal" must be a user-perceptible warning (like a light or sound) or if it can be an internal signal that directly causes the device to trip.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The plain language of "alarm circuit" and "alarm signal" may suggest any circuit that generates a signal indicating a failure condition, without limitation as to how that signal is used (’158 Patent, col. 5:16-19).
    • Evidence for a Narrower Interpretation: The specification explains that a possible response to a self-check failure includes "lighting an indicator lamp and locking out the device reset mechanism" (’158 Patent, Abstract; col. 2:13-15). Furthermore, the summary describes the response as "tripping the protection device" (’158 Patent, col. 8:37-38). This suggests the "alarm" is not merely informational but is the functional act of disabling or tripping the GFCI.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges contributory and inducing infringement (Compl. ¶10). However, it does not plead specific facts to support the requisite knowledge and intent, such as alleging that Defendant's user manuals instruct customers to use the products in an infringing manner.
  • Willful Infringement: The complaint asserts that Defendant's infringement "has been and is willful and deliberate" (Compl. ¶12). It does not allege any facts supporting pre-suit knowledge of the patents. The allegation appears to be premised on the notice provided by the complaint itself for establishing knowledge for ongoing, post-suit infringement.

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

  • A threshold procedural question will be one of pleading sufficiency: does the complaint's assertion of nine patents against a line of products, without identifying any specific infringed claims or accused functionalities, provide the Defendant with sufficient notice to satisfy federal pleading standards?
  • A central evidentiary question will be one of technical proof: can the Plaintiff produce evidence to demonstrate that the accused Hubbell GFCIs, across their various models, actually practice the specific and diverse technologies claimed, which range from the mechanical design of contact assemblies (’398, ’799 Patents) to the precise logic of electronic self-testing (’158, ’005 Patents) and failure-mode detection circuits (’564 Patent)?
  • A core legal issue will be one of claim scope: can the potentially broad claim terms, such as "biasing means" and "alarm circuit," be construed to cover the specific mechanical and electronic implementations used in the accused devices, or will they be limited by the patents' specifications to the particular embodiments disclosed?