DCT
7:25-cv-00302
baier & michels GmbH & Co KG v. Engineered Inserts & Systems Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Baier & Michels GmbH & Co. KG (Germany); Baier & Michels USA Inc. (Delaware)
- Defendant: Engineered Inserts & Systems, Inc. (Connecticut)
- Plaintiff’s Counsel: Beattie B. Ashmore, P.A.; Jones Day
- Case Identification: 7:25-cv-00302, D.S.C., 01/16/2025
- Venue Allegations: Plaintiff asserts venue is proper in the District of South Carolina because Defendant subjected itself to personal jurisdiction in the district by purposefully directing patent enforcement activities there, including sending correspondence to Plaintiff's South Carolina-based entity and filing a prior lawsuit in the same court.
- Core Dispute: Plaintiff seeks a declaratory judgment that its one-piece sealing plugs do not infringe and/or that Defendant's patents, which are directed to two-piece sealing plug systems and methods, are invalid.
- Technical Context: The technology involves mechanical sealing plugs used to create high-pressure seals in openings, such as those in hydraulic manifolds for heavy construction and farm equipment.
- Key Procedural History: This declaratory judgment action follows a lawsuit filed by the defendant (EIS) against the plaintiff (Baier) in the same court, which is currently subject to Baier's motion to dismiss. The complaint also references pre-suit correspondence and a European Opposition proceeding for a related patent, in which EIS allegedly distinguished its two-piece invention from one-piece prior art designs—a distinction central to the current dispute.
Case Timeline
| Date | Event |
|---|---|
| 2014-01-21 | Earliest Priority Date for all Patents-in-Suit (’182, ’029, ’397, ’598, ’147) |
| 2018-08-07 | U.S. Patent No. 10,040,182 Issues |
| 2023-06-27 | U.S. Patent No. 11,685,029 Issues |
| 2024-01-23 | U.S. Patent No. 11,878,397 Issues |
| 2024-04-09 | EIS sends letter to Baier alleging infringement |
| 2024-04-29 | Baier responds to EIS, requesting claim charts |
| 2024-05-06 | EIS sends reply with partial chart for ’397 patent |
| 2024-05-17 | Baier responds, asserting non-infringement |
| 2024-07-18 | EIS sends letter disagreeing with Baier's position |
| 2024-08-14 | Baier sends reply letter to EIS |
| 2024-08-14 | EIS files initial infringement complaint against Baier |
| 2024-09-24 | U.S. Patent No. 12,097,598 Issues |
| 2024-10-01 | U.S. Patent No. 12,103,147 Issues |
| 2024-11-01 | Baier files motion to dismiss EIS's complaint |
| 2024-11-22 | EIS files Amended Complaint |
| 2024-12-13 | Baier files motion to dismiss EIS's Amended Complaint |
| 2025-01-16 | Baier files this Complaint for Declaratory Judgment |
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 prior art sealing plugs, such as those with break-off stems, as being "complicated and expensive" to manufacture and install properly (’182 Patent, col. 1:12-21). Other prior art tools allegedly lack features for controlling the installation depth of the plug (’182 Patent, col. 1:28-30).
- The Patented Solution: The invention is a system for installing a two-piece insert, which consists of a tapered "core" press-fit into a "cylindrical sleeve" (’182 Patent, col. 3:45-50). A powered installation tool with a threaded pull-rod engages the core. When actuated, the tool retracts the pull-rod, pulling the tapered core further into the sleeve. This action causes the sleeve to expand radially, pressing it against the walls of an installation hole to create a high-pressure seal (’182 Patent, col. 2:12-24). The complaint references Figure 1C of the patent, which depicts the separate core (3) and cylindrical sleeve (5) components before assembly (Compl. ¶18).
- Technical Importance: This approach aims to provide a reliable and repeatable method for installing a robust mechanical seal in high-pressure environments like hydraulic manifolds, avoiding the perceived manufacturing and installation drawbacks of prior art designs (’182 Patent, col. 2:1-3).
Key Claims at a Glance
- The complaint identifies independent claim 1 as asserted (Compl. ¶40).
- Essential elements of claim 1 include:
- A system for sealing a hole...comprising:
- an installation device having a drive;
- an end piece coupled to said installation device;
- a pull-rod coupled to said drive...having a threaded end;
- an insert including a cylindrical sleeve and a core, the core having a threaded hole...and a tapered outer wall;
- a switch coupled to a rotation drive...such that axial pressure on said pull-rod activates said switch;
- wherein activation of said switch causes said rotation drive to rotate said pull-rod; and
- said pull-rod retractable by said drive to pull the core into the cylindrical sleeve thereby radially expanding the cylindrical sleeve.
- The complaint notes that the remaining claims are dependent on claim 1 (Compl. ¶44).
U.S. Patent No. 11,685,029 - “System and Method for Installing a Manifold Plug”, Issued June 27, 2023
The Invention Explained
- Problem Addressed: As with the related ’182 patent, the specification describes a need for an improved sealing system that is less complex and costly than prior art plugs (’029 Patent, col. 1:12-21).
- The Patented Solution: The invention is a "device containing a sealed hole," which comprises a "block" (e.g., a hydraulic manifold) and a two-piece "insert" installed within a hole in the block (’029 Patent, col. 2:25-40). The insert is made of a "core" and a "metallic sleeve." Installation involves retracting the core into the sleeve, which exerts an outward pressure to create a seal against the cylindrical hole in the block (’029 Patent, col. 13:50-65).
- Technical Importance: The invention provides a specific configuration for a sealed device, focusing on the post-installation relationship between the two-piece insert and the block it seals.
Key Claims at a Glance
- The complaint identifies independent claims 11 and 17 as asserted (Compl. ¶65).
- Essential elements of claim 11 include:
- A device containing a sealed hole comprising:
- a block having an outer surface with a cylindrical hole therein;
- an insert, comprising: a core having a height and a tapered section and a cylindrical section; a threaded hole; a metallic sleeve;
- the insert installed in and seals the cylindrical hole such that the core is...retracted into the sleeve...[to] force the cylindrical outer surface to seal against the cylindrical hole.
- Essential elements of claim 17 are similar but add limitations on the final position of the sleeve relative to the block's surface and require the hole to be sealed with the core's threaded hole free from any male threaded device post-installation.
- The complaint states the remaining claims are dependent (Compl. ¶69).
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 for sealing a hole. The method involves providing a two-piece insert (comprising a core and a metallic sleeve) and placing it into an installation hole. A male threaded device is then used to pull the core into the sleeve, causing the sleeve to expand radially and seal the hole (Compl. ¶85).
- Asserted Claims: Independent claims 1 and 11 (Compl. ¶85).
- Accused Features: The complaint argues that the anticipated use of the one-piece b&m-KL PLUG® would not practice the claimed method, which requires providing and installing a two-piece insert (Compl. ¶¶88, 90).
U.S. Patent No. 12,097,598 - “System and Method For Installing A Manifold Plug”, Issued September 24, 2024
- Technology Synopsis: This patent claims the sealing plug itself. The claimed plug comprises a "core" with a tapered section and a separate "metallic sleeve" with a cylindrical void. The components are configured such that when the core is pulled into the sleeve's void, the core's outer wall exerts an outward force on the sleeve to create a seal (Compl. ¶105).
- Asserted Claims: Independent claim 1 (Compl. ¶105).
- Accused Features: The complaint alleges that the b&m-KL PLUG® is a one-piece insert and therefore does not meet the claim limitation of a plug comprising a separate "core" and "sleeve" (Compl. ¶107).
U.S. Patent No. 12,103,147 - “System and Method For Installing A Manifold Plug”, Issued October 1, 2024
- Technology Synopsis: This patent claims a system for sealing a hole, similar to the ’182 patent. The system comprises an installation device (with a drive, pull-rod, and switch) and a two-piece insert (a sleeve and a core). The system is configured so that axial pressure on the pull-rod activates a switch, causing the tool to pull the core into the sleeve and expand it (Compl. ¶124).
- Asserted Claims: Independent claim 1 (Compl. ¶124).
- Accused Features: The complaint alleges that the b&m-KL PLUG® is merely an insert plug, not a multi-component "system," and that it is a one-piece item, not an "insert including a sleeve... and a core" (Compl. ¶¶126, 127).
III. The Accused Instrumentality
Product Identification
- The "b&m-KL PLUG®" line of one-piece closing and sealing elements (Compl. ¶2).
Functionality and Market Context
- The accused products are described as single-piece, universally applicable sealing elements designed for holes in components like hydraulic manifolds (Compl. ¶¶17, 26). The complaint emphasizes their "one-piece" construction, quoting a product brochure to distinguish them from the two-piece designs of the Patents-in-Suit (Compl. ¶26). Plaintiff Baier states it "intends to commence manufacturing and sales" of these products in the United States, making this a dispute over anticipated, rather than past, activity in the U.S. (Compl. ¶3). The complaint includes a photograph of various b&m-KL Plugs, showing metallic, cylindrical components of different sizes, some with open ends and some with closed ends (Compl. p. 8, at ¶ 26).
IV. Analysis of Infringement Allegations
U.S. Patent No. 10,040,182 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged (Non-)Infringing Functionality (per Plaintiff's Complaint) | Complaint Citation | Patent Citation |
|---|---|---|---|
| A system for sealing a hole...comprising: an installation device...an end piece...a pull-rod...an insert | The accused b&m-KL PLUG® is only an insert plug; it is not, and would not be sold as, a complete "system" that includes the claimed installation tool elements (Compl. ¶42). | ¶42 | col. 2:12-24 |
| an insert including a cylindrical sleeve and a core | The accused b&m-KL PLUG® is a one-piece insert and does not contain the two separate components of a "cylindrical sleeve" and a "core" as claimed (Compl. ¶43). | ¶43 | col. 3:45-50 |
| a switch coupled to a rotation drive...such that axial pressure on said pull-rod activates said switch | The accused KL-Plug can be installed with conventional tools, such as a standard rivet tool, that do not have the claimed switch activated by axial pressure (Compl. ¶46). | ¶46 | col. 6:2-4 |
Identified Points of Contention
- Scope Questions: A primary issue is whether the claim term "insert including a cylindrical sleeve and a core" can be interpreted to read on a unitary, one-piece product. A related question is whether the sale of only the plug component could lead to liability for infringement of a "system" claim that requires an installation tool.
- Technical Questions: The dispute raises the question of whether the accused one-piece plug has functionally or structurally distinct regions that could be construed as a "sleeve" and a "core," or if its single-body construction represents a fundamentally different technical approach from the claimed two-piece, press-fit assembly.
U.S. Patent No. 11,685,029 Infringement Allegations
| Claim Element (from Independent Claim 11) | Alleged (Non-)Infringing Functionality (per Plaintiff's Complaint) | Complaint Citation | Patent Citation |
|---|---|---|---|
| A device containing a sealed hole comprising: a block...and an insert... | Plaintiff anticipates selling the KL Plug, which is an "insert" but not a "block." The sale of the plug alone would not constitute direct infringement of a claim to the combined "device" (Compl. ¶67). | ¶67 | col. 13:50-52 |
| an insert, the insert comprising: a core...a metallic sleeve... | The b&m-KL PLUG® is a one-piece insert and does not comprise the two separate "core" and "sleeve" pieces required by the claim (Compl. ¶68). | ¶68 | col. 14:1-2 |
Identified Points of Contention
- Scope Questions: As with the ’182 patent, a central question is whether the term "insert comprising a core ... and a ... sleeve" can be construed to cover a one-piece product. Additionally, a dispute may arise over whether selling the insert alone can satisfy a claim directed to a "device" that requires both the insert and the "block" into which it is installed.
- Technical Questions: The analysis will question what evidence exists to show that the accused one-piece plug is structurally and functionally equivalent to the claimed two-piece insert, or if the single-body design avoids infringement by operating differently.
V. Key Claim Terms for Construction
The Term: "an insert including a cylindrical sleeve and a core" (from '182 patent, claim 1) and related phrasing in other patents.
- Context and Importance: This term is at the heart of the non-infringement argument. Plaintiff Baier contends its product is a "one-piece insert," while it characterizes the patented invention as requiring two separate pieces (Compl. ¶¶ 26, 43). The construction of this term may be dispositive of infringement.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party seeking a broader construction might argue that the terms "sleeve" and "core" should be defined by their function (i.e., one part expands while the other part is pulled into it), and that a single piece of material could have distinct sections that perform these respective functions.
- Evidence for a Narrower Interpretation: The specification repeatedly describes and depicts two distinct components. For instance, it states that the "core 3 inserts into the void 10" of the sleeve and that a "cylindrical section 7 of the core 3 is press fit into the lower end of sleeve 5" (’182 Patent, col. 3:45-50). The exploded view in Figure 1C clearly shows two separate physical parts. The complaint also alleges that the patentee made arguments in a European proceeding distinguishing its invention from one-piece designs, which could be used as evidence for a narrower scope (Compl. ¶27).
The Term: "system for sealing a hole" (from '182 patent, claim 1)
- Context and Importance: Plaintiff argues it plans to sell only the plug component, not the full "system" which the claim recites as including an installation device, pull-rod, and switch (Compl. ¶42). This term's construction is critical for determining what constitutes a single infringing act.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The complaint does not present evidence for this view. A patentee, however, might point to indirect infringement theories, where the sale of a material component of a patented system can lead to liability.
- Evidence for a Narrower Interpretation: The plain language of claim 1 explicitly lists multiple components: "an installation device," "an end piece," "a pull-rod," and "an insert." The specification also describes the invention as a "system...that allows for easier installation," implying the tool is integral to the claimed system (’182 Patent, col. 1:51-52).
VI. Other Allegations
Indirect Infringement
- The complaint seeks a declaratory judgment of non-infringement for both induced and contributory infringement (Compl. ¶5). Plaintiff alleges it would not induce infringement because its one-piece plug is not covered by the claims, and customers could use non-infringing tools for installation (Compl. ¶¶ 45-46). It alleges no contributory infringement on the grounds that its one-piece plug is a staple article of commerce suitable for substantial non-infringing uses (e.g., installation with a generic tool) and is not especially made or adapted for an infringing use (Compl. ¶47).
Willful Infringement
- While this action does not contain a willfulness claim against the Plaintiff, it is filed in response to an earlier lawsuit where Defendant EIS asserted willful infringement (Compl. ¶35). The complaint details pre-suit correspondence beginning on April 9, 2024, which forms the basis for Defendant's original knowledge allegations (Compl. ¶28).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the claim language "insert including a ... sleeve and a core," which the patent specification and figures describe as a two-piece assembly, be construed to cover the accused "one-piece" b&m-KL PLUG®? The resolution may depend heavily on intrinsic evidence and any arguments made during prior European proceedings.
- A second key issue will be one of liability for component sales: can Plaintiff Baier, by planning to sell only the plug component in the U.S., be found liable for infringing claims directed to a multi-component "system" or a "device" that also requires an installation tool or the "block" into which the plug is installed?
- A third, alternative question will be one of validity: if the claims are construed broadly enough to read on a one-piece design, do the patent specifications provide sufficient written description and enablement to support that scope, particularly given the complaint's allegation that the patentee expressly distinguished and criticized one-piece structures as a problem to be solved? (Compl. ¶¶ 49, 73).