Pass & Seymour, Inc. v. Hubbell Inc.
| Citation | 532 F.Supp.2d 418 |
| Decision Date | 23 July 2007 |
| Docket Number | No. 5:07-CV-0272.,5:07-CV-0272. |
| Parties | PASS & SEYMOUR, INC., Plaintiff, v. HUBBELL INCORPORATED, Defendant. |
| Court | U.S. District Court — Northern District of New York |
Bond, Schoeneck & King, PLLC, David L. Nocilly, Esq., of Counsel, George R. McGuire, Esq., of Counsel, Syracuse, NY, for Plaintiff.
Roylance, Abrams, Berdo & Goodman, LLP, Mark S. Bicks, Esq., of Counsel, Washington, D.C., Costello Cooney & Fearon, PLLC, Edward G. Melvin, Esq., of Counsel, Syracuse, NY, for Defendant.
There has been no objection to the excellent Report and Recommendation (Mt. No. 35) prepared by United States Magistrate Judge David E. Peebles.1 Upon review this Court adopts in full the discussion and recommendations regarding the motions for a preliminary injunction (Dkt. No. 6) and a stay (Dkt. No. 24). It is therefore
ORDERED that the Report and Recommendation of United States Magistrate Judge David E. Peebles (Dkt. No. 35) is accepted and adopted; and it is further
ORDERED that plaintiffs motion for preliminary injunction (Dkt. No. 6) is denied; and it is further
ORDERED that defendant's cross motion (Dkt. No. 24) for a stay of litigation pending the outcome of reexamination proceedings by the United States Patent and Trademark Office is granted; and it is further
ORDERED that counsel is directed to notify the Court when the United States Patent and Trademark Office has completed the reexamination proceedings.
IT IS SO ORDERED.
REPORT AND RECOMMENDATION
Plaintiff Pass & Seymour, Inc. ("P & 5"), a manufacturer and distributor of electrical wiring products headquartered in Syracuse, New York, has commenced this action asserting patent infringement claims against defendant Hubbell Incorporated ("Hubbell"), a Connecticut — based competitor. In its complaint, P & S alleges that Hubbell's quick-connect product, designed to enhance efficiency in the installation of wiring devices such as electrical sockets and switches, is a "knock-off' of plaintiff's hugely successful PLUG-TAIL product and infringes the underlying patents under which PLUG-TAIL is manufactured and sold.
In furtherance of its efforts to sideline one of only a handful of potential direct competitors in what is described as a "niche market", P & S has moved for a preliminary injunction precluding' Hubbell from marketing its accused product during the pendency of this action. Hubbell has since countered with an application for a stay of the case based upon its application to the United States Patent and Trademark Office ("PTO") for reexamination of the patent now in suit.
Having carefully reviewed the parties' submissions and considered the evidence and testimony` adduced during a hearing conducted to address the pending' crossmotions, which have been referred to me for the issuance of a report, I recommend against granting the requested preliminary injunction, finding that legitimate questions have been raised regarding the validity of plaintiffs patent, and thus the likelihood that P & S will prevail at trial, and that consideration of the other relevant factors which inform the preliminary injunction analysis including, inter alia, whether plaintiff will suffer irreparable harm in the absence of an injunction, militates against the award of such relief. Additionally, because the results of a reexamination of plaintiffs patent could allow the court and the parties to benefit from the PTO's expertise in addressing the validity of the patent in suit and potentially avoid considerable litigation expense, I recommend that this action be stayed until such time as the reconsideration process is concluded or the PTO declines to entertain Hubbell's request.
Plaintiff P & S, a New York corporation with its principal place of business located in Syracuse, New York, is a well-known manufacturer and distributor of electrical wiring products throughout the United States. Among the products offered by P & S is a newly developed device sold under the brand name PLUG-TAIL. The PLUG-TAIL, which represents an embodiment of multiple patents held by P & S, including U.S. Patent No. 7,189,110 (the "`110 patent") issued by the PTO on March 13, 2007, is a device designed to improve the speed and case with which electrical devices such as electrical sockets and switches are installed, particularly during the construction process. In one particular iteration of the PLUG-TAIL, stripped ends of the three insulated wires typically included within a bundled electrical power source cable are electrically coupled, through the use of a wire nut or electrical tape; to correspondingly colored cables forming part of a plug connector.1 In some models of the PLUG-TAIL device these electrical transmission wires may be fed, directly into the housing of the plug connector and affixed through crimping or some other similar means, The housing portion of the plug connector into which the wires are fed is then plugged into a receptacle on the rear surface of the particular electrical wiring device, thus completing the circuit. PLUG-TAIL devices are particularly well-suited for installation in health care facilities, educational institutions, retail establishments, hospitality locations, and multiple dwelling housing units.2
P & S markets and promotes its PLUG-TAIL device as a means of reducing the time required to install electrical devices and permitting installation by less-experienced electricians, thereby significantly reducing labor costs associated with those installations. P & S thus touts the benefits of utilizing the PLUG-TAIL system over a conventional plug or switch, the installation of which typically requires that a stripped end of each of the three source wires be individually connected to the device by wrapping it around a screw on the apparatus and tightening that screw.
Bringing the PLUG-TAIL, which is representative of a quick-connect device introduced by P & S in or about June of 2004 to what was then a relatively young market, to a point of commercial viability entailed significant investment by P & S in terms of both research and development, and advertising. The results of that investment have proven to be extremely favorable; sales of the P a S PLUG-TAIL devices have increased from $503,182 for the portion of 2004 during which the product was available, to a pinnacle of $2,084,633 in 2006, with the expectation, based upon year-to-date sales, that that figure will double in 2007.
P & S introduced its PLUG-TAIL, the first commercially-available quick-connect device, under U.S. Patent No. 6,994,585 (the "1585 Patent") issued on February 7, 2006, and addressing certain aspects of the PLUG-TAIL device design. The '110 patent was issued as a "continuation — in — part" of the application leading to the issuance of '585 patent, and was followed by the issuance on March 27, 2007 of U.S. Patent No. 7,195,517 (the "1517 Patent") as a "continuation" of the application which led to the issuance of the ma patent.3
The '110 patent, one of the two patents implicated in the pending motion for preliminary injunction, contains a total of forty-six claims, comprised of four of which are independent (claims one, twenty-one, twenty-five, and thirty-five) with the balance being dependent. Although plaintiffs complaint is not so specific or necessarily limited, in its motion for preliminary injunction plaintiff places reliance solely upon claims 25 and 29 of the '110 patent. The first of those claims specifies
[a]n electrical wiring system comprising: a plug connector including a plurality of plug contacts, the plug connector being configured to terminate a plurality of wires; and
an electrical wiring device including a cover member, a body member having a back major surface, and a ground strap disposed between the cover member and the body member, the body member including a receptacle configured to accept the plug connector and a plurality of device contacts, the plurality of device contacts being configured to mate with the plurality of plug contacts when the plug connector is inserted into the receptacle, a distance from the ground strap to the back major surface is less than 2.5 inches.
Claim 29 adds the limitation that the distance between "a major plug surface to the back major surface is approximately 0.5 inches or less," to enhance compactness of the device and to allow for additional space for the housing of wires within the box into which it is installed.
Plaintiffs quick-connect patents, dating back to the '585 patent, have not been without controversy. On November 29, 2006, Hubbell sought reexamination of the '585 patent by the PTO. That request was granted, and resulted in a PTO office action, mailed on March 26, 2007, rejecting the claims of the '585 patent as unpatentable under 35 U.S.C. § 102 and/or § 103 in light of prior art. P & S has since filed a response with the PTO substantially amending the scope of the '585 claims.
On April 11, 2007 Hubbell sought reexamination of the '110 patent by the. PTO. A similar request for reexamination, challenging the more recent '517 patent, was filed by Hubbell on May 8, 2007. The PTO has yet to respond to those requests, although under the agency's rules of practice those responses are not due, until July 11, 2007 and August 8, 2007, respectively.
This action was precipitated by defendant Hubbell's announcement that it will soon be offering quick-connect products to compete with the P & S PLUG-TAIL line. In connection with that initiative, Hubbell has begun offering a Bryant brand device marketed as, including a SNAP CONNECT feature, with many similarities to the P & S PLUG-TAIL quick-connect device.
In its submissions, Hubbell does not seriously dispute that its SNAP CONNECT product infringes claims twenty-five and twenty-nine of the '110...
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