DCT
5:19-cv-02074
Extang Corp v. Tyger Auto Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Extang Corporation (Michigan) and Laurmark Enterprises, Inc. d/b/a BAK Industries (Texas)
- Defendant: Tyger Auto Inc. (Washington)
- Plaintiff’s Counsel: Dickinson Wright PLLC; Call & Jensen
- Case Identification: 5:19-cv-02074, C.D. Cal., 10/30/2019
- Venue Allegations: Venue is alleged to be proper as Defendant maintains a regular and established place of business in Rialto, California, within the district, from which it allegedly ships infringing products and commits other acts of infringement.
- Core Dispute: Plaintiffs allege that Defendant’s foldable, hard-panel tonneau covers for pickup trucks infringe two patents related to specialized hinge assemblies that provide weather resistance and enable compact folding.
- Technical Context: The technology relates to the competitive market for aftermarket pickup truck accessories, where foldable hard tonneau covers are valued for providing security, weather protection, and improved aerodynamics.
- Key Procedural History: The complaint alleges a history of intellectual property disputes between Defendant and Plaintiffs' parent company, Truck Hero, Inc., citing several prior patent and trademark infringement lawsuits. This history is presented to support the current allegations of knowing and willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2006-09-26 | Priority Date for ’758 Patent |
| 2006-10-26 | Priority Date for ’788 Patent |
| 2009-02-03 | Issue Date for U.S. Patent No. 7,484,788 |
| 2011-11-22 | Issue Date for U.S. Patent No. 8,061,758 |
| 2013 | Defendant Tyger Auto Inc. allegedly formed |
| 2016-10-28 | Prior patent infringement lawsuits filed against Defendant by Plaintiffs' affiliates |
| 2018 | Additional lawsuit filed against Defendant by Plaintiffs' affiliates |
| 2019-10-30 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,484,788 - "Solid Fold Tonneau System" (Issued Feb. 3, 2009)
The Invention Explained
- Problem Addressed: The patent background acknowledges the market for foldable tonneau covers and identifies a need for general improvements, particularly for covers incorporating solid panels, which provide enhanced strength and rigidity over soft-top versions ('788 Patent, col. 2:27-33).
- The Patented Solution: The invention is a tonneau system with solid panels connected by hinge assemblies. The core innovation is a hinge design that incorporates a "gutter" system. This gutter is designed to collect any water that might penetrate the primary outer seal of the hinge and then discharge that water outside the truck's cargo bed, thereby providing a secondary layer of weather protection ('788 Patent, Abstract; col. 2:35-49). Figure 7 of the patent provides a cross-sectional view illustrating the pivot members, seals, and the resulting channel that forms the gutter ('788 Patent, Fig. 7).
- Technical Importance: This design sought to enhance the weather resistance of solid folding covers, addressing a key consumer concern and improving the reliability of protecting cargo from the elements.
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claims 2, 3, and 4 (Compl. ¶¶42-46).
- Essential elements of independent claim 1 include:
- A tonneau system with at least a first and second panel.
- A hinge assembly connecting the panels, which includes a "base component" and a "first pivot member".
- The "first pivot member" has a "first flange" and inner surfaces that define a "first gutter".
- The "first flange" engages an edge on the "base component" to form a "primary seal".
- The "first gutter" is structured to collect fluid that passes the primary seal and discharge it outside the cargo box.
- Plaintiffs reserve the right to assert additional claims (Compl. ¶47).
U.S. Patent No. 8,061,758 - "Pick-Up Truck Box Cover" (Issued Nov. 22, 2011)
The Invention Explained
- Problem Addressed: The patent background outlines several known drawbacks of open truck beds, including aerodynamic drag and exposure of cargo to theft and weather. It also notes that previous cover designs could be leaky, difficult to install, or could permanently obstruct access to parts of the cargo box ('758 Patent, col. 1:8-33).
- The Patented Solution: The invention is a foldable panel cover that focuses on the geometry of the hinge joints. It discloses a system of "interlocking elements" connecting the cover's lateral frame members to "spacer bars" of differing widths. This specific architecture is designed to allow the rigid panels to fold over and lie "substantially flat onto the third panel," ensuring a compact, stable configuration when the cover is stored in the open position ('758 Patent, Abstract; col. 8:31-38). The relationship between the panels and spacer bars is depicted in Figure 8 ('758 Patent, Fig. 8).
- Technical Importance: This hinge and spacer system addressed the mechanical challenge of folding multiple rigid panels on top of one another compactly and without interference, a key usability feature for hard-folding covers.
Key Claims at a Glance
- The complaint asserts independent claim 2 and dependent claims 3 and 4 (Compl. ¶¶56-59).
- Essential elements of independent claim 2 include:
- A cover with a first, second, and third panel.
- A first "lateral member" on the first panel and a second "lateral member" on the second panel.
- A "first spacer bar" with interlocking elements that connect to the first and second lateral members.
- A third "lateral member" on the second panel and a fourth "lateral member" on the third panel.
- A "second spacer bar" with interlocking elements that connect to the third and fourth lateral members.
- The "second spacer bar" having a width greater than the "first spacer bar" but less than the panel widths.
- The width of the second spacer bar is selected to allow the second panel to fold over onto the third, with the panels achieving a specific parallel orientation.
- Plaintiffs reserve the right to assert additional claims (Compl. ¶60).
III. The Accused Instrumentality
Product Identification
- The accused product is the "Tyger T5 Alloy Hard Top," which the complaint alleges may also be sold under the name "Maxmate Alloy Hard Top" (Compl. ¶¶42, 56).
Functionality and Market Context
- The T5 Alloy Hard Top is a foldable, multi-panel hard tonneau cover designed for the cargo beds of pickup trucks (Compl. ¶42). The complaint alleges that the product's hinge assemblies, which connect its rigid panels and allow it to fold, incorporate the patented technologies (Compl. ¶¶43, 57). A photograph from the Defendant's website shows the product in various stages of being folded, illustrating its core function (Compl. p. 9). The complaint characterizes Defendant as a "relative newcomer" that distributes "low quality 'knock-off' tonneau products" in direct competition with Plaintiffs' products (Compl. ¶¶6, 27).
IV. Analysis of Infringement Allegations
’788 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a first hinge assembly pivotally connecting said first and second panels, said first hinge assembly including: a base component having a first edge, and a first pivot member fixed to said first panel and pivotally coupled to said base component... | The T5 Alloy Hard Top includes a hinge assembly that pivotally connects the panels, and this assembly allegedly includes a base with a first edge and a pivot member fixed to the first panel. | ¶43 | col. 9:22-28 |
| said first pivot member having a first flange and a plurality of inner surfaces defining a first gutter facing and aligned with said first flange... | The accused pivot member is alleged to include a flange and inner surfaces that define a gutter. A cross-section photograph of the accused T5 Alloy Hard Top hinge is provided to illustrate the alleged gutter and sealing features (Compl. p. 10). | ¶43 | col. 9:28-31 |
| said first flange engaging said first edge and forming a first primary seal for inhibiting fluid communication... | The flange of the accused hinge allegedly engages the first edge of the base to create a primary seal that inhibits fluid communication. | ¶43 | col. 9:31-35 |
| said first gutter collecting a fluid which passes said first primary seal and discharging the fluid outside of the cargo box of the pickup truck. | The accused gutter is alleged to collect any fluid that passes the primary seal and then discharge it outside the truck's cargo box. | ¶43 | col. 9:35-39 |
- Identified Points of Contention:
- Technical Question: What evidence demonstrates that the accused channel functions as a "gutter" by performing the specific two-step process required by the claim: first "collecting a fluid which passes said first primary seal" and then "discharging" it? The infringement analysis may turn on whether the accused structure performs this specific function or if any fluid management is incidental.
- Scope Question: Does the allegedly unitary extrusion of the accused hinge (Compl. p. 10) map onto the claim's requirement for a distinct "base component" and a separate "pivot member", or does this represent a structural difference that places the product outside the claim's scope?
’758 Patent Infringement Allegations
| Claim Element (from Independent Claim 2) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a first panel, a second panel, and a third panel, with each panel having a core material between top and bottom plates... | The T5 Alloy Hard Top is alleged to have a cover with first, second, and third panels, each with a core between top and bottom plates. | ¶57 | col. 8:43-45 |
| a first lateral member... a second lateral member... a first spacer bar, with the first lateral frame member including a first interlocking element interlocked with a back lateral edge of the first spacer bar... | The accused product is alleged to have first and second lateral members connected by a first spacer bar via a first interlocking element. Cross-section photographs show the accused product's hinge and spacer bar configuration (Compl. p. 14). | ¶57 | col. 8:48-60 |
| a second spacer bar; a third lateral member... a fourth lateral member... [with] interlocking element[s] interlocked with... the second spacer bar... | The accused product is further alleged to have third and fourth lateral members connected by a second spacer bar via interlocking elements. | ¶57 | col. 8:61-9:5 |
| with the second spacer bar having a width greater than the first spacer bar... and... selected to allow the second panel to fold over onto the third panel... | The second spacer bar of the accused product is alleged to have a specific width, greater than the first, that enables the claimed flat-folding geometry. | ¶57 | col. 9:6-15 |
- Identified Points of Contention:
- Technical Question: Does the accused product's hinge assembly contain every component recited in the highly detailed claim—specifically, four distinct "lateral members" and two distinct "spacer bars"? The defense may argue that the accused product uses a more integrated or simplified structure that lacks one or more of these specific, claimed components.
- Scope Question: Will the term "interlocking element" be construed to require the specific T-slot geometry shown in the patent's embodiments ('758 Patent, Fig. 6), or can it read on any form of mechanical connection? The viability of the infringement claim may depend on whether the accused product's connection mechanism falls within the ultimate construction of this term.
V. Key Claim Terms for Construction
Term from the ’788 Patent: "gutter"
- Context and Importance: This term is the central feature of the asserted independent claim of the '788 Patent. The entire infringement theory rests on the accused product having a "gutter" that performs the claimed function. Practitioners may focus on this term because the Defendant is likely to argue that any channel in its product is an incidental artifact of its design and not a functional "gutter" as taught by the patent.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not provide an explicit definition of "gutter", which may support an argument that the term should be given its plain and ordinary meaning as any channel for carrying away fluid.
- Evidence for a Narrower Interpretation: The claim itself imparts a functional limitation, requiring the gutter to perform a two-step action: "collecting a fluid which passes said first primary seal and discharging the fluid" ('788 Patent, col. 9:35-39). The abstract similarly describes that the hinge assemblies can "define gutters to collect fluid and guide the fluid away" ('788 Patent, Abstract). This suggests the term may be construed to require not just a channel, but a structure specifically configured to perform this fluid-management role.
Term from the ’758 Patent: "interlocking element"
- Context and Importance: Claim 2 of the '758 Patent recites this term four times, making the nature of the "interlock" between the lateral members and spacer bars fundamental to the infringement analysis. The dispute will likely center on how robustly the components must connect to be considered "interlocked."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue for a broad, functional definition where any components that engage or connect to each other are "interlocked."
- Evidence for a Narrower Interpretation: The specification describes a specific embodiment where the interlocking mechanism involves fittings that "slide over and interlock" with a corresponding slot ('758 Patent, col. 4:55-57, Fig. 6). This language, tied to a specific slide-in, retaining geometry, may support a narrower construction that requires more than simple abutment and instead mandates a feature that mechanically secures the components against separation in at least one direction.
VI. Other Allegations
- Indirect Infringement: While the prayer for relief seeks damages for both direct and indirect infringement (Compl. p. 16, ¶2), the factual allegations in the body of the complaint focus exclusively on a theory of direct infringement, alleging that Tyger itself performs the infringing acts of making, using, selling, and importing the accused tonneau covers (Compl. ¶¶42, 56). The complaint does not plead specific facts to support induced or contributory infringement, such as detailing instructions provided to end-users.
- Willful Infringement: The complaint makes extensive allegations to support willfulness. It claims pre-suit knowledge based on Defendant's alleged "history of unlawful infringements" and multiple prior lawsuits filed by Plaintiffs' corporate affiliates against Defendant for patent and trademark infringement (Compl. ¶¶29-38). This history, Plaintiffs allege, gave Defendant actual or constructive knowledge of Plaintiffs' patent rights or, at a minimum, created a state of "willful blindness" to the likelihood of infringement (Compl. ¶¶49, 61). Willfulness is also alleged based on continued infringement after the filing of this complaint (Compl. ¶¶49, 61).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim construction and scope: For the '788 patent, can any channel in the accused hinge be considered a functional "gutter" as defined by the claim, or is it merely an incidental structural feature? For the '758 patent, does the accused product embody the precise and complex architecture of four distinct "lateral members", two "spacer bars", and four "interlocking elements" required by the claim, or is there a material structural or functional deviation?
- A second central question will be one of intent and willfulness: Will the court find that the alleged history of litigation between the parties' corporate families is sufficient to establish that the Defendant knew of or was willfully blind to the specific patents-in-suit, thereby exposing it to the risk of enhanced damages?