DCT

2:23-cv-01068

RB Distribution Inc v. Skyward Automotive Products LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:23-cv-01068, D. Ariz., 06/09/2023
  • Venue Allegations: Venue is alleged to be proper in the District of Arizona because the Defendants are said to conduct business in the state, including the advertising, marketing, sale, and importation of the accused products.
  • Core Dispute: Plaintiff alleges that Defendants’ aftermarket oil filter housing assemblies infringe three patents related to single-piece, cast metallic oil filter adaptors designed to improve durability over conventional plastic or multi-part assemblies.
  • Technical Context: The technology concerns automotive engine components, specifically oil filter housings in the aftermarket parts industry, where reliability and resistance to heat and pressure are critical.
  • Key Procedural History: The three asserted patents are related, with the '674 patent being a continuation of the application that led to the '005 patent, and the '675 patent being a continuation of the application for the '674 patent. This indicates they share a common specification. The complaint alleges that Defendants had actual notice of the asserted patents as of June 2, 2023, one week prior to the filing of the suit.

Case Timeline

Date Event
2020-08-21 Earliest Priority Date for '005, '674, and '675 Patents
2021-07-12 Plaintiff's Patented Product Launch (SKU 926-876)
2022-05-02 Plaintiff's Patented Product Launch (SKU 926-959)
2023-04-25 U.S. Patent No. 11,635,005 Issued
2023-05-02 U.S. Patent No. 11,639,674 Issued
2023-05-02 U.S. Patent No. 11,639,675 Issued
2023-06-09 Complaint Filed

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

U.S. Patent No. 11,635,005 - "Oil Filter Assembly", issued April 25, 2023

The Invention Explained

  • Problem Addressed: The patent describes issues with prior art oil filter assemblies, which are often made of plastic to save weight (Compl. ¶32; ’005 Patent, col. 1:25-36). These plastic parts require metallic inserts for threaded connections and plugs to seal openings left from the molding process, creating multiple potential failure points that can lead to oil leaks, stress cracks, and damage from overtightening components (’005 Patent, col. 1:37-58).
  • The Patented Solution: The invention is a robust oil filter adaptor made from a "single metallic casting," such as aluminum (’005 Patent, col. 2:60-61, col. 3:1-3). This unitary construction eliminates the need for separate failure-prone inserts and plugs by incorporating threaded apertures directly into the cast body for attaching components like oil coolers and sensors. The design also provides for a fully enclosed, linear oil flow path, improving durability against pressure and heat (’005 Patent, col. 2:61-68, col. 3:16-24).
  • Technical Importance: This approach aims to provide a more reliable and durable direct-replacement aftermarket part for a critical engine system, simplifying manufacturing and reducing common points of failure found in hybrid plastic-metallic assemblies (’005 Patent, col. 2:61-64).

Key Claims at a Glance

  • The complaint asserts independent claim 1 (Compl. ¶40).
  • Essential elements of claim 1 include:
    • An adaptor for connecting an oil filter and an oil cooler to an engine.
    • Comprising a "single metallic casting".
    • The casting has an elongated body with surfaces to mate with an engine's oil lubrication network and an oil cooler, and an oil filter housing at one end.
    • The body includes a "wholly" internal oil lubrication flow path.
    • The casting has "at least one threaded aperture" for "direct threaded engagement" with an additional component.
  • The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 11,639,674 - "Oil Filter Assembly", issued May 2, 2023

The Invention Explained

  • Problem Addressed: As a continuation sharing a common specification with the '005 patent, the '674 patent addresses the same technical problems: the structural weaknesses and failure risks inherent in plastic oil filter assemblies that rely on metallic inserts and post-molding plugs (’674 Patent, col. 1:37-58; Compl. ¶26).
  • The Patented Solution: The solution is a "unitary metallic casting" that forms an integrated oil filter adaptor assembly (’674 Patent, col. 2:61-68). By casting the part as a single piece, threaded connections for components can be machined directly into the body, which improves durability and eliminates the failure points associated with hybrid material construction (’674 Patent, col. 3:6-10). The complaint includes a figure from the patent, Illustration 4, showing the exploded view of this single-piece adaptor with its various threaded apertures (129) and fasteners (128) (Compl. p.9).
  • Technical Importance: The invention offers a more robust aftermarket solution for oil filter housings, a component frequently subjected to thermal cycling and high pressure, by using a simplified and stronger manufacturing method (’674 Patent, col. 2:1-4).

Key Claims at a Glance

  • The complaint asserts independent claim 1 (Compl. ¶54).
  • Essential elements of claim 1 include:
    • An engine oil adaptor assembly for mounting in an engine valley.
    • Comprising a "unitary metallic casting" that defines an integrated structure.
    • The structure has an elongated casted body portion with surfaces to mate with an engine and an oil cooler, an internal lubrication flow path, and an oil filter housing.
    • The body includes a "plurality of apertures" that are "directly threaded in the elongated casted body" for mating with a component.
  • The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 11,639,675 - "Oil Filter Assembly", issued May 2, 2023

  • Technology Synopsis: This patent, which shares a specification with the other asserted patents, is directed to a cast metallic oil filter housing that solves durability issues found in plastic prior art designs (Compl. ¶¶29, 32). The invention achieves this by creating the adaptor as a single-piece casting, which allows components to be threaded directly into the metallic body, thereby eliminating failure-prone inserts and providing an improved, enclosed flow path for engine oil ('675 Patent, col. 1:37-58, col. 2:65-col. 3:3).
  • Asserted Claims: Independent Claim 1 (Compl. ¶68).
  • Accused Features: The complaint accuses Defendants’ SKP SK926959 product, alleging it is a "single metallic casting" with an elongated body, an internal lubrication path, and a plurality of "casted apertures that are threaded in the metallic casting" (Compl. ¶¶69, 71, 73).

III. The Accused Instrumentality

Product Identification

  • The accused products are unicast aluminum engine oil filter housing assemblies sold by the Defendants, specifically identified by the stock keeping unit (SKU) "SKP SK926959" (Compl. ¶¶17, 19).

Functionality and Market Context

  • The complaint alleges the accused products are aftermarket parts that function as adaptors to connect an engine's oil filter and cooler to its lubrication system (Compl. ¶¶56, 70). The complaint asserts these products are "virtually identical" to Plaintiff's own patented products and are marketed as meeting or exceeding OEM quality standards (Compl. ¶18). A screenshot from a third-party retail website is provided as evidence of the product being offered for sale. This screenshot, Illustration 3, shows the accused product, its SKU, its price, and a description stating it "Includes Filter & Cooler" (Compl. p.6). The complaint alleges Defendants are intentionally exploiting Plaintiff's goodwill by using a nearly identical SKU number, undercutting Plaintiff's pricing, and using an orange cap color that is "knowingly associated with Plaintiff" (Compl. ¶¶20-21).

IV. Analysis of Infringement Allegations

'005 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
An adaptor for connecting an oil filter and an oil cooler to an engine... The accused products are described as an "Engine Oil Filter Housing" providing a connection for the oil filter and oil cooler. ¶42 col. 1:17-21
a single metallic casting having: The accused products are alleged to have a "unitary body manufactured from casted aluminum." ¶43 col. 2:60-61
an elongated body with a lower surface configured to mate with an oil lubrication network in an engine, an oil filter housing is defined at a first end of the elongated body, and an upper surface that is configured to mate with an oil cooler; The products are alleged to have an elongated cast aluminum body with lower and upper mating surfaces and a filter housing. ¶44 col. 2:64-68
wherein the elongated body includes an oil lubrication flow path that is wholly within the elongated body and extends between an oil lubrication network in an engine, and the oil filter housing... The accused product's body is alleged to contain an internal path for oil flow between the engine network and the filter. ¶45 col. 3:16-24
and at least one threaded aperture is formed in the single metallic casting for receiving at least one additional component in a direct threaded engagement with the single metallic casting. The accused products are alleged to have "threaded apertures casted as a part of the unitary aluminum body." ¶46 col. 3:4-7

'674 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
An engine oil adaptor assembly for mounting in an engine valley... The accused products are described as oil filter housings that connect into the lubrication system in an engine's valley. ¶56 col. 1:21-23
a unitary metallic casting that defines an integrated structure having: The products are alleged to be a "singular, unitary body composed of casted aluminum that define an integrated structure." ¶57 col. 3:2-4
an elongated casted body portion with a lower surface configured to mate with a predetermined existing engine; an internal lubrication flow path ... that connects to a lubrication network within a valley ... and an oil filter housing... The accused products are alleged to have an elongated body with a lower mating surface, an internal oil flow path, and a filter housing. ¶¶58-59 col. 2:64-68
an upper surface of the elongated body is configured to mate with an oil cooler; The product's body is alleged to have an upper surface that mates with an oil cooler. ¶60 col. 2:66-67
wherein the elongated casted body includes a plurality of apertures that are directly threaded in the elongated casted body for mating with a respective threaded component. The accused products are alleged to have "threaded apertures casted as a part of the unitary aluminum body." ¶61 col. 3:6-10

Identified Points of Contention

  • Technical Questions: The complaint's infringement theory rests heavily on the allegation that the accused product is "virtually identical" to the patented one (Compl. ¶18). A primary evidentiary question will be whether the accused product is in fact a "single metallic casting." The complaint relies on visual marketing materials, which may not reveal the product's internal construction or whether it contains non-integral parts, such as inserts, that could distinguish it from the claims.
  • Scope Questions: The case may raise questions about the scope of key claim terms. For example, does the term "direct threaded engagement" preclude any and all forms of thread reinforcement, or does it simply mean the absence of the specific type of press-fit or molded-in "metallic insert" described as a drawback of the prior art? (’005 Patent, col. 1:40-45).

V. Key Claim Terms for Construction

The Term: "single metallic casting" (’005 Patent, Claim 1) / "unitary metallic casting" (’674 Patent, Claim 1)

  • Context and Importance: This term is foundational to the patents' claimed novelty, which is the move away from multi-part or hybrid plastic-metal assemblies. The infringement case hinges on whether the accused product falls within the scope of this term.
  • Evidence for a Broader Interpretation: The specification does not provide an explicit definition, which may support an interpretation based on the term's plain and ordinary meaning: a single, continuous piece of metal formed in a mold.
  • Evidence for a Narrower Interpretation: The Background section heavily criticizes prior art for its use of "medal inserts," "plugs," and components joined by "adhesive or spin welding" (’005 Patent, col. 1:30-58). A defendant may argue that "single" or "unitary" must be construed in light of this explicit disavowal, meaning a casting that is entirely free from any such separate, added components.

The Term: "direct threaded engagement" (’005 Patent, Claim 1)

  • Context and Importance: This limitation defines how components are attached to the adaptor and is a key element of the solution to the problems of prior art inserts. Practitioners may focus on this term because the physical nature of the threading in the accused product will be a critical factual issue.
  • Evidence for a Broader Interpretation: The term could be interpreted to mean any threading that is formed in the main body of the cast metal, as distinct from threading formed in a separate component that is subsequently added to the body.
  • Evidence for a Narrower Interpretation: The patent describes the invention as providing for "direct threading of components to the adaptor" to eliminate issues like "stress cracks in the plastic" that arise from "metallic inserts" (’005 Patent, col. 1:40-45, col. 2:62-64). A party could argue that this context requires the threads to be formed exclusively in the parent cast material, without any other material or structural element involved at the point of threading.

VI. Other Allegations

Indirect Infringement

  • The complaint focuses on direct infringement under 35 U.S.C. § 271(a), alleging that Defendants "make, use, offer to sell, sell... and/or import" the accused products (Compl. ¶¶39, 53, 68). No specific facts are alleged to support separate counts for induced or contributory infringement.

Willful Infringement

  • The complaint alleges that Defendants' infringement is "intentional, willful, and malicious" (Compl. ¶¶21, 48, 63, 75). This allegation is based on claims of Defendants copying the patented product, using a "near identical SKU" (SKP SK926959 vs. Plaintiff's 926-959), using product coloring "knowingly associated with Plaintiff," and having actual notice of the asserted patents as of at least June 2, 2023 (Compl. ¶¶20-21, 36).

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

  • A central issue will be one of factual verification: does the physical construction of the accused product align with the complaint's allegations? The case's trajectory will depend heavily on what discovery reveals about the materials and manufacturing process of the accused "SKP SK926959" part—specifically, whether it is a "single metallic casting" with "direct threaded" apertures, or if its construction includes elements that distinguish it from the patent claims.
  • The dispute may also turn on a question of definitional scope: how will the court construe the term "single metallic casting"? Whether this term is interpreted broadly to mean any one-piece metal part, or narrowly to exclude any part with post-casting additions of any kind, will be critical in determining the boundary between the patented invention and the prior art, and ultimately in deciding infringement.
  • Finally, a key question will be one of intent: do the allegations of copying—including the similar SKU, product trade dress, and pricing strategy—provide sufficient evidence to establish that Defendants' alleged infringement was willful? The court's findings on this point will determine Plaintiffs' entitlement to enhanced damages.