DCT

6:24-cv-04453

Engineered Inserts & Systems Inc v. baier & michels GmbH & Co KG

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 6:24-cv-04453, D.S.C., 08/14/2024
  • Venue Allegations: Venue is based on allegations that Defendant baier & michels USA Inc. maintains a regular and established place of business in Greenville, South Carolina, and has committed acts of infringement in the district. The German parent company, baier & michels GmbH & Co. KG, is alleged to direct the U.S. subsidiary's infringing operations.
  • Core Dispute: Plaintiff alleges that Defendants’ line of b&m-KL Plugs® and the methods of their installation infringe four U.S. patents related to mechanical inserts used for sealing and providing functional orifices in manifolds.
  • Technical Context: The technology at issue involves high-performance mechanical plugs used to seal auxiliary holes in components like hydraulic and pneumatic manifolds, a critical function in automotive and industrial machinery.
  • Key Procedural History: The complaint alleges that Defendant b&m GMBH previously and unsuccessfully challenged the validity of a European counterpart to the asserted patents in a European Opposition proceeding, suggesting a history of engagement with the patented technology. Plaintiff also alleges sending explicit notice of infringement to Defendants in April, May, and July of 2024.

Case Timeline

Date Event
2014-01-21 Earliest Priority Date for ’182, ’029, ’397 Patents
2017-11-07 Priority Date for ’105 Patent
2018-08-07 ’182 Patent Issued
2020-12-08 ’105 Patent Issued
2023-06-27 ’029 Patent Issued
2024-01-23 ’397 Patent Issued
2024-04-09 First alleged notice of infringement letter sent
2024-08-14 Complaint Filing Date

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

U.S. Patent No. 10,040,182 - "System and Method for Installing a Manifold Plug," Issued August 7, 2018

The Invention Explained

  • Problem Addressed: The patent describes drawbacks of prior art sealing plugs, such as rivet-style plugs that require a stem to break off, which can be an expensive and imprecise process, and other plugs that lack mechanical installation power or depth control, leading to inconsistent installation (ʼ182 Patent, col. 1:11-40).
  • The Patented Solution: The invention is a system for installing a "stemless" plug. It uses an installation tool with a threaded pull-rod to engage a tapered inner core. The tool then retracts the pull-rod, pulling the tapered core into an outer metallic sleeve, which causes the sleeve to expand radially and create a high-pressure seal against the walls of the hole. The installation tool's design allows for precise control over the installation depth and enables the tool to be simply unthreaded and removed for reuse after installation (’182 Patent, Abstract; col. 2:4-11, Fig. 2A-2D).
  • Technical Importance: This approach provides a repeatable, controllable method for creating a robust seal capable of withstanding very high pressures (e.g., 40,000 psi) without the manufacturing complexity and potential failure points of break-off stem designs (ʼ182 Patent, Abstract).

Key Claims at a Glance

  • The complaint asserts independent claim 1 (Compl. ¶33).
  • Essential elements of independent claim 1 include:
    • A system comprising an installation device with a drive.
    • An end piece on the device with a distal surface larger than the hole to be sealed.
    • A pull-rod with a threaded end, coupled to the drive.
    • An insert composed of a metallic cylindrical sleeve and a core with a tapered outer wall and a threaded hole.
    • A switch activated by axial pressure on the pull-rod, which in turn causes a rotation drive to rotate the pull-rod.
    • The pull-rod is retractable by the drive to pull the core into the sleeve, causing radial expansion.
    • The installation device is configured to rotate the pull-rod to release its threaded end from the core after installation.
  • The complaint reserves the right to assert a number of dependent claims (Compl. ¶34).

U.S. Patent No. 10,859,105 - "Insert and System for Providing a Calibrated Metering Orifice," Issued December 8, 2020

The Invention Explained

  • Problem Addressed: The patent notes that prior art plugs are typically for sealing only and do not allow other parts to be attached after installation. There is a need for an insert that can not only seal but also provide a functional feature, such as a threaded connection point or a calibrated orifice for controlling fluid flow in a pressurized system (ʼ105 Patent, col. 1:22-31).
  • The Patented Solution: The invention is a method of installing an insert that creates a "calibrated metering orifice." Similar to the '182 patent, a tapered core is pulled into a sleeve to create a seal. However, this insert’s core features a through-hole with a portion of a smaller, specific diameter, which remains open after installation. This through-hole is designed to precisely regulate, or "meter," the flow of fluid passing through it ('105 Patent, Abstract; col. 2:41-54).
  • Technical Importance: The invention extends the utility of expansion plugs from simple sealing to creating active, functional components within a hydraulic or pneumatic system, such as providing precise pressure drops or flow control without requiring separate, complex valves or orifices ('105 Patent, col. 2:5-7).

Key Claims at a Glance

  • The complaint asserts independent claim 11 (Compl. ¶43).
  • Essential steps of independent claim 11 include:
    • Providing an insert with a core and a smooth, tapered outer wall cylindrical sleeve, where the core has a through-hole with a threaded portion and a second portion of a smaller diameter.
    • Coupling a threaded rod to the threaded portion of the core's through-hole.
    • Inserting the insert into a manifold's installation hole.
    • Pulling the core axially into the sleeve, causing the sleeve to expand and secure the insert.
    • Removing the threaded rod from the core's through-hole.
  • The complaint reserves the right to assert a number of dependent claims (Compl. ¶44).

U.S. Patent No. 11,685,029 - "System and Method for Installing a Manifold Plug," Issued June 27, 2023

  • Technology Synopsis: This patent claims the final assembled product: a "device containing a sealed hole." It protects the combination of a block (e.g., a manifold) with the sealing insert installed inside, focusing on the structural characteristics of the post-installation state where the retracted core exerts outward pressure on the sleeve to seal the hole (Compl. ¶53; ’029 Patent, Abstract).
  • Asserted Claims: Independent claims 11 and 17 are asserted (Compl. ¶¶53-54).
  • Accused Features: The b&m-KL Plugs®, when installed into a manifold or other block as instructed by Defendants, are alleged to create the infringing "device containing a sealed hole" (Compl. ¶¶55, 58).

U.S. Patent No. 11,878,397 - "System and Method for Installing a Manifold Plug," Issued January 23, 2024

  • Technology Synopsis: This patent claims a "method of sealing an installation hole." The claims focus on the specific sequence of providing an insert where the sleeve is already secured to the core before installation, placing this pre-assembled insert into a hole, and pulling the core into the sleeve with a threaded device to create the seal (Compl. ¶64; ’397 Patent, Abstract).
  • Asserted Claims: Independent claims 1 and 11 are asserted (Compl. ¶¶64-65).
  • Accused Features: The methods used and taught by Defendants for installing the b&m-KL Plugs®, including at trade shows and in customer training, are alleged to infringe the claimed method (Compl. ¶¶19, 66).

III. The Accused Instrumentality

  • Product Identification: Defendants' line of products marketed as "b&m-KL Plugs®" (Compl. ¶19).
  • Functionality and Market Context:
    • The accused products are described in Defendants' marketing materials as "one-piece and universally applicable closing and sealing element for holes with and without pressure load" (Compl. ¶21). The complaint includes a screenshot from a brochure showing a product family with various sizes and geometries. (Compl. ¶22).
    • The complaint alleges the plugs are installed via a method where a "spreading element is pulled into the sealing body," causing the body to expand and seal a hole (Compl. ¶25, p. 8). A visual from the Defendant's brochure illustrates this process. (Compl. p. 8).
    • The complaint alleges that different versions of the b&m-KL Plugs® exist, including versions for sealing blind holes and versions with through-holes for fluid flow or instrumentation, which are alleged to correspond to different asserted patents (Compl. ¶24). The defendants are alleged to be direct competitors of the plaintiff (Compl. ¶7).

IV. Analysis of Infringement Allegations

’182 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
an installation device having a drive; Defendants use, demonstrate, and provide installation tools for the b&m-KL Plugs® at trade shows and to customers. ¶19, ¶30 col. 2:12-13
an end piece coupled to said installation device and including a bore and a distal surface wherein a dimension of said distal surface is larger than a dimension of the hole; The installation tool shown in Defendants' brochure has a nosepiece that abuts the surface around the installation hole, controlling installation depth. p. 8 col. 2:15-18
a pull-rod coupled to said drive and passing through said bore, the pull-rod having a threaded end; The installation process involves pulling a "spreading element" into the "sealing body," which the complaint alleges is accomplished with a pull-rod mechanism. p. 8 col. 2:18-20
an insert including a cylindrical sleeve and a core, the cylindrical sleeve being metallic and having a through hole with the core positioned in the through hole... The accused b&m-KL Plugs® are alleged to consist of a "sealing body" (sleeve) and a "spreading element" (core). Photos show this two-part construction. ¶22, ¶24, p. 8 col. 2:20-29
a switch coupled to a rotation drive and said pull-rod coupler such that axial pressure on said pull-rod activates said switch; The complaint does not provide specific detail for analysis of the switch mechanism in the accused tool but alleges the overall system infringes. ¶35 col. 6:11-14
said pull-rod retractable by said drive to pull the core into the cylindrical sleeve thereby radially expanding the cylindrical sleeve against the hole... The Defendant’s brochure explicitly illustrates that the "spreading element is pulled into the sealing body" to complete the assembly process. p. 8 col. 7:14-19
said installation device is configured to rotate said pull-rod and release the threaded end from the threaded hole of the core. The complaint alleges the accused system infringes, but Defendants' brochure also contains language about a "predetermined breaking point," which raises questions about the release mechanism. p. 8 col. 7:20-22
  • Identified Points of Contention:
    • Technical Question: A central technical question is how the accused installation tool disengages from the installed plug. The patent claims a tool that is "configured to rotate said pull-rod and release the threaded end." However, a visual from the Defendant's own brochure describes a "predetermined breaking point" that "tears" during installation (Compl. p. 8). This suggests a potential operational difference, as the patent specification distinguishes its invention from prior art break-off stem designs (’182 Patent, col. 1:13-19).
    • Evidentiary Question: What evidence demonstrates that the accused installation tool contains the claimed "switch" that is activated by "axial pressure" to initiate rotation? The complaint's allegations regarding the internal mechanics of the accused tool are not detailed, suggesting this will be a focus of discovery.

V. Key Claim Terms for Construction

  • The Term: "release the threaded end" ('182 Patent, Claim 1)
  • Context and Importance: The construction of this term may be dispositive for the infringement analysis of the '182 patent. Practitioners may focus on this term because its interpretation will determine whether the accused system, which is described in a brochure as having a "predetermined breaking point," can literally infringe a claim that requires the tool to "release" the pull-rod. This goes to the core operational principle of the invention.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: A party could argue that "release" is a general term for disengagement, and that breaking a connection is one way to "release" it. The claim language itself does not explicitly require unscrewing.
    • Evidence for a Narrower Interpretation: The specification states that after retraction, the "installation device is configured to rotate said pull-rod and release the threaded end from the threaded hole of the core" (’182 Patent, col. 7:20-22). This explicit linkage of "rotate" and "release" suggests the release mechanism is rotational (i.e., unscrewing). Furthermore, the patent’s background criticizes break-off stem plugs, suggesting the invention was intended to be different (’182 Patent, col. 1:13-19).

VI. Other Allegations

  • Indirect Infringement: The complaint alleges inducement of infringement based on Defendants’ affirmative acts of teaching customers how to install the b&m-KL Plugs® through trade show demonstrations, marketing brochures, and online videos (Compl. ¶¶19, 30-31). It further alleges that the only substantial use of the plugs is to infringe, which may support a claim for contributory infringement (Compl. ¶31).
  • Willful Infringement: Willfulness allegations are based on Defendants having actual knowledge of the asserted patents. The complaint alleges this knowledge arises from multiple sources: Plaintiff's patent-marking website (Compl. ¶16), a series of explicit notice letters sent in 2024 (Compl. ¶17), and, most significantly, Defendants' alleged monitoring of Plaintiff's patent portfolio and prior participation in a European Opposition proceeding against a related European patent before July 2021 (Compl. ¶18).

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

  • A core issue will be one of technical mechanism: Does the accused b&m-KL Plug® installation system operate by the claimed method of reversibly threading and unthreading a pull-rod, or does it use a break-off stem mechanism, as potentially suggested by the "predetermined breaking point" language in its own marketing materials? The answer will be central to the question of literal infringement.
  • A second key question will be the impact of prior foreign litigation: How will the allegation that Defendant previously challenged a European counterpart patent affect the analysis of willfulness? The court will need to assess whether this history establishes the subjective intent required for enhanced damages under the Halo standard, making the willfulness claim a potentially significant factor in the case.
  • A final evidentiary question will be one of infringement scope: Can Plaintiff demonstrate that all accused versions of the b&m-KL Plugs®—including those for simple sealing and those for volume flow regulation—practice the specific limitations of the correspondingly asserted patents, particularly the precise functional requirements of a "calibrated metering orifice" as claimed in the '105 patent?