DCT
2:23-cv-00223
Robroy Industries Texas LLC v. ABB Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Robroy Industries Texas LLC (Texas)
- Defendant: ABB Inc. (Delaware) and ABB Installation Products, Inc. (Tennessee)
- Plaintiff’s Counsel: The Webb Law Firm
- Case Identification: 2:23-cv-00223, E.D. Tex., 05/19/2023
- Venue Allegations: Venue is based on Defendants' sales and offers for sale of accused products in the district, including through multiple Texas-based locations and distributors.
- Core Dispute: Plaintiff alleges that Defendant’s Ocal-Blue® Double-Coat Sealing Fittings, used in electrical conduit systems, infringe a patent related to seal-off fittings with specific coating features for flame-path control.
- Technical Context: The technology pertains to safety components in electrical conduit systems for hazardous environments, where controlling potential explosions is critical.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendant with direct notice of the patent-in-suit on July 8, 2022, and subsequently provided an element-by-element infringement claim chart on December 22, 2022, which may be used to support allegations of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2017-06-09 | U.S. Patent No. 10,982,799 Priority Date |
| 2021-04-20 | U.S. Patent No. 10,982,799 Issued |
| 2022-07-08 | Plaintiff allegedly sent direct notice of patent to Defendant |
| 2022-12-22 | Plaintiff allegedly provided infringement claim chart to Defendant |
| 2023-05-19 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Patent No. 10,982,799, "Seal-Off Fitting with Flame-Path Control," issued April 20, 2021 (the "’799 Patent").
The Invention Explained
- Problem Addressed: In hazardous industrial settings, electrical conduit fittings must be "explosion-proof." This requires a "flame path" where hot gases from an internal explosion can cool by traveling through a long, narrow channel, typically the threads between a fitting body and a plug. The patent notes that protective coatings applied to these fittings can be overly thick, making it appear that a plug is fully and safely installed when, in fact, it is not, creating a safety hazard (’799 Patent, col. 2:5-17).
- The Patented Solution: The invention is a seal-off fitting with precisely controlled coatings that do not obstruct visual inspection of the threaded engagement. The solution involves leaving key parts of the threads uncoated while applying a tapered coating to the fitting body adjacent to the threads, which ensures that an improper installation is visually apparent (’799 Patent, col. 6:56-65; Abstract). This allows for simple verification that the flame path is properly established.
- Technical Importance: This approach addresses a critical safety need for a reliable and easily verifiable method of installing explosion-proof fittings in corrosive or hazardous environments where protective coatings are necessary (’799 Patent, col. 2:24-28).
Key Claims at a Glance
- The complaint asserts infringement of at least independent claim 1 (Compl. ¶13).
- Independent Claim 1 recites a seal-off fitting comprising:
- a conduit body defining: an inner cavity, at least one conduit port, and at least one threaded sealing port
- a threaded lid [plug] engageable with the sealing port
- a first coating applied to at least a portion of the conduit body
- a second coating applied to at least a portion of the lid [plug]
- wherein portions of the threads on both the sealing port and the lid [plug] remain uncoated to define a flame path
- wherein at least a top portion of the lid [plug] threads are coated by the second coating
- wherein the first coating is tapered around a periphery of the sealing port to a minimum thickness adjacent to the threads
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
- The EYD, EYS, and EZS Ocal-Blue® Double-Coat Sealing Fittings, with a specific focus on the Ocal® Part No.: EYS2-G as an exemplary product (Compl. ¶13, ¶15).
Functionality and Market Context
- The accused products are conduit fittings "used to restrict the passage of gases, vapors and flames" in hazardous locations (Compl. ¶15). The complaint alleges these products are certified under UL 1203 for use in explosive environments, which requires a functional flame path (Compl. ¶22). The complaint provides an image showing the accused Ocal® Part No.: EYS2-G, a conduit fitting with threaded ports. (Compl. p. 4, top image).
IV. Analysis of Infringement Allegations
’799 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A seal-off fitting for a conduit system comprising: a conduit body defining: an inner cavity; at least one conduit port adapted to receive a conduit; and at least one threaded sealing port | The Ocal® Part No.: EYS2-G is a seal-off fitting that includes a conduit body with an inner cavity, a pair of conduit ports, and a threaded sealing port. | ¶15-16 | col. 5:48-51 |
| a threaded lid engageable with the sealing port; | The accused fitting includes a threaded plug that is engageable with the sealing port. An image depicts the plug being screwed into the sealing port of the fitting body. (Compl. p. 4, bottom image). | ¶17 | col. 5:51-53 |
| a first coating applied to at least a portion of the conduit body; | The conduit body of the accused fitting is coated with polyvinyl chloride (PVC). | ¶18 | col. 6:20-22 |
| and a second coating applied to at least a portion of the lid, | A second coating, shown by a lighter color, is applied to a top surface of the plug and at least the first thread. | ¶19 | col. 6:33-35 |
| wherein at least a portion of the threads of the sealing port and at least a portion of the threads of the lid remain uncoated, | The threads of the sealing port lack the PVC coating, and the remaining threads of the plug (below the first thread) do not include the second coating. An image shows the plug with a distinct color difference between the top coated thread and the lower uncoated threads. (Compl. p. 5, bottom image). | ¶20-21 | col. 6:40-42 |
| wherein the uncoated threads of the sealing port and the uncoated threads of the lid define a flame path for flue gases exiting the conduit body, | The fitting's UL 1203 listing for explosive environments allegedly requires it to have uncoated threads on the port and plug that define a flame path for flue gases. | ¶22 | col. 1:57-63 |
| wherein the first coating is not deposited on an internal tapered surface... and wherein the second coating is not deposited on an external tapered surface... | Note: Claim 1, as recited in the complaint, is for a plug-style fitting, while these negative limitations appear in claim 7 for a lid-style fitting. The complaint quotes a version of claim 1 that includes limitations not present in the issued patent's claim 1, creating an ambiguity. | ¶14 | col. 11:5-12 |
| wherein the first coating is tapered around a periphery of the sealing port to a minimum thickness directly adjacent to the threads of the sealing port. | The PVC coating on the accused product is allegedly "tapered around a periphery of the sealing port to a minimum thickness directly adjacent to the threads." An image shows the fitting body with the coating thinning as it approaches the threaded port. (Compl. p. 6, bottom image). | ¶24 | col. 6:56-59 |
Identified Points of Contention
- Scope Questions: A significant ambiguity exists, as the complaint quotes a version of Claim 1 that appears to mix elements from the issued patent's Claim 1 (plug-style) and Claim 7 (lid-style) (’799 Patent, col. 10:45-col. 12:12; Compl. ¶14). The court may need to clarify which claim limitations are actually being asserted. The analysis here proceeds based on the plug-style limitations that are supported by infringement allegations.
- Technical Questions: A central factual question will be whether the coating on the accused fitting is "tapered" in the manner required by the claim. The complaint alleges this tapering exists (Compl. ¶24), but this will likely require expert testimony and measurement to resolve. Another question is whether the different coatings on the body (PVC) and plug ("lighter color") meet the definitions of a "first coating" and a "second coating" as distinct claim elements.
V. Key Claim Terms for Construction
The Term: "flame path"
- Context and Importance: This term is central to the patent's purpose of providing an "explosion-proof" fitting. The infringement case depends on demonstrating that the accused product's uncoated threads create a structure that meets the technical definition of a "flame path" as understood in the patent.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claims broadly define the path as being formed by "the uncoated threads of the sealing port and the uncoated threads of the plug" (’799 Patent, col. 10:59-62). This could suggest any path through the threads meets the limitation.
- Evidence for a Narrower Interpretation: The specification describes the flame path's specific function: providing "sufficient distance for escaping flue gases to cool before exiting into the atmosphere" (’799 Patent, col. 1:57-63). This functional language may be used to argue that the term requires not just a path, but one proven to be long and narrow enough to cool gases effectively.
The Term: "tapered around a periphery of the sealing port"
- Context and Importance: This structural limitation is a key feature distinguishing the invention from prior art that had obstructive coating buildups. Practitioners may focus on this term because infringement depends on a direct structural correspondence between the accused product's coating profile and this claimed feature.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term itself is not explicitly defined, which could support a plain-and-ordinary-meaning construction where any gradual thinning of the coating qualifies as "tapered."
- Evidence for a Narrower Interpretation: The specification describes the tapering in functional terms, stating it is tapered "down to a controlled minimum thickness" such that the plug "cannot be mistakenly installed so shallow that the... fitting would not be explosion proof" (’799 Patent, col. 6:56-65). This, along with figures like Fig. 8 showing a distinct angle (β), may support a narrower construction requiring a specific, functionally-driven profile.
VI. Other Allegations
Indirect Infringement
- The complaint does not contain specific counts or factual allegations for indirect infringement.
Willful Infringement
- The complaint alleges willful infringement based on pre-suit knowledge of the ’799 Patent (Compl. ¶27). The alleged factual basis is a direct notice letter sent on July 8, 2022, and a subsequent claim chart provided on December 22, 2022, demonstrating alleged infringement (Compl. ¶26).
VII. Analyst’s Conclusion: Key Questions for the Case
- A foundational issue will be one of claim accuracy: the court must first resolve the discrepancy between the language of Claim 1 as recited in the complaint and the language in the issued ’799 patent to establish the precise limitations at issue.
- A key factual question will be one of structural correspondence: does the protective coating on the accused Ocal-Blue® fitting possess the specific "tapered" profile adjacent to the sealing port, as required by the asserted claim, or does its geometry differ in a legally significant way?
- A central evidentiary question will concern willfulness: given the specific pre-suit notice alleged, the focus will be on what actions, if any, the Defendant took after being provided with a letter and detailed claim chart alleging infringement.