DCT
5:20-cv-00328
Justin Smith v. Extreme Performance 1 LLC
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Justin Smith (Arizona)
- Defendant: Extreme Performance 1, LLC (California)
- Plaintiff’s Counsel: Schmeiser, Olsen & Watts, LLP
- Case Identification: 5:20-cv-00328, C.D. Cal., 02/19/2020
- Venue Allegations: Venue is alleged to be proper in the Central District of California because Defendant maintains a regular and established place of business in San Bernardino County, which is within the district.
- Core Dispute: Plaintiff alleges that Defendant’s aftermarket tie rod kits for off-road vehicles infringe a patent related to a specialized pivot assembly designed to reduce undesirable steering behavior known as "bump steer."
- Technical Context: The technology concerns suspension and steering components for all-terrain vehicles (ATVs) and utility task vehicles (UTVs), a market where enthusiasts often modify stock vehicles to enhance performance on rough terrain.
- Key Procedural History: The complaint states that Plaintiff sent Defendant a cease and desist letter on December 4, 2018, providing notice of the patent-in-suit and the alleged infringement. This pre-suit notice is cited as a basis for the willfulness allegations.
Case Timeline
| Date | Event |
|---|---|
| 2017-07-27 | U.S. Patent No. 9,988,083 Priority Date |
| 2018-06-05 | U.S. Patent No. 9,988,083 Issue Date |
| 2018-12-04 | Plaintiff sent Cease and Desist Letter to Defendant |
| 2020-02-19 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,988,083 - Tie Rod Connection Pivot Assembly
The Invention Explained
- Problem Addressed: The patent's background section describes how factory steering systems on off-road vehicles, particularly when modified with larger tires, can suffer from significant "bump steer"—an undesirable change in wheel direction as the suspension travels vertically over bumps. This can make the vehicle feel unstable and difficult to control on rough terrain (ʼ083 Patent, col. 2:10-16).
- The Patented Solution: The invention addresses this problem with a modified tie rod connection assembly. It introduces a pin member with an "expanded ball portion" that is deliberately positioned "offset from center" (’083 Patent, col. 2:23-27). This offset geometry repositions the pivot point of the tie rod connection, which serves to align the tie rod so it is "substantially parallel" with the vehicle's upper and lower suspension arms. By making the components travel on more similar arcs, the system significantly reduces bump steer (ʼ083 Patent, col. 5:13-18).
- Technical Importance: This approach offers a targeted, aftermarket solution to a known handling problem, aiming to improve vehicle stability without requiring a complete and costly redesign of the original equipment manufacturer's (OEM) steering system (ʼ083 Patent, col. 2:14-16).
Key Claims at a Glance
- The complaint asserts independent claim 9.
- The essential elements of independent claim 9 are:
- A tie rod with an elongate body and a tie rod end.
- A pin member, for placement between a wheel carrier's upper and lower mounting extensions, comprising a first end, a second end, and an expanded ball portion between the ends.
- The expanded ball portion is "offset toward said lower mounting extension."
- A tie rod joint formed by a pivotal coupling where the pin member passes through an aperture in the tie rod end.
- A pivot point between the tie rod end and the expanded ball portion that is "closer to said lower mounting extension than said upper mounting extension."
- The complaint also asserts dependent claims 10 and 12, which add further limitations regarding a "flared portion" on the pin member and specific distances from the mounting extensions, respectively (Compl. ¶¶32-35).
III. The Accused Instrumentality
Product Identification
The accused instrumentality is Defendant’s "CAN AM X3 MAX HD TIE RODS BUMP STEER CORRECTION KIT" (Compl. ¶20).
Functionality and Market Context
The accused product is an aftermarket kit sold for installation on off-road vehicles. The complaint alleges that the kit includes components, specifically a tie rod and pin member, that are installed at the vehicle's wheel end to alter the stock steering geometry (Compl. ¶31). The product's marketing as a "Bump Steer Correction Kit" suggests it is intended to solve the same technical problem addressed by the ’083 Patent (Compl. ¶16). The complaint alleges that the accused product competes directly with Plaintiff's own products embodying the patent (Compl. ¶25).
IV. Analysis of Infringement Allegations
U.S. Patent No. 9,988,083 Infringement Allegations
| Claim Element (from Independent Claim 9) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a tie rod adapted to be coupled to a wheel carrier at an outer tie rod joint, said tie rod comprising an elongate body and a tie rod end; | The accused device includes a tie rod with an elongate body and a tie rod end adapted to couple to a wheel carrier. | ¶31 | col. 8:9-11 |
| a pin member adapted to be disposed between upper and lower mounting extensions of said wheel carrier, said pin member comprising a first end, a second end and an expanded ball portion between said first and second end, wherein said expanded ball portion is offset toward said lower mounting extension; | The accused device includes a pin member with a first end, a second end, and an expanded ball portion, which is alleged to be offset toward the lower mounting extension of the wheel carrier. | ¶31 | col. 8:12-18 |
| said tie rod joint defined by a pivotal coupling of said tie rod end, said pin member passing through an aperture in said tie rod end; | A pivotal coupling is allegedly formed where the pin member passes through an aperture in the tie rod end. Exhibit G, a photograph of the accused device's pin member and tie rod end, is cited to show this connection. | ¶31 | col. 8:19-21 |
| and a pivot point between said tie rod end and said expanded ball portion, wherein said pivot point is closer to said lower mounting extension than said upper mounting extension. | The complaint alleges that the resulting pivot point of the accused device's assembly is closer to the lower mounting extension than the upper mounting extension. | ¶31 | col. 8:22-25 |
Identified Points of Contention
- Scope Questions: A central dispute may concern the interpretation of relational terms. The claim requires the expanded ball portion to be "offset toward" the lower extension and the pivot point to be "closer to" it. The litigation will likely focus on whether the specific geometry and dimensions of the accused product satisfy these claimed spatial relationships, as they would be construed by a person of ordinary skill in the art.
- Technical Questions: A key evidentiary question will be how the parties prove the location of the claimed "pivot point" within the accused assembly. The analysis may involve expert testimony and technical drawings to determine if the accused product's structure meets the claim's geometric limitations.
V. Key Claim Terms for Construction
"expanded ball portion is offset toward said lower mounting extension"
- Context and Importance: This limitation defines the core structural innovation of the patent. The existence and direction of this "offset" are fundamental to the infringement allegation. Practitioners may focus on this term because the case may turn on the degree of offset required to infringe.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the purpose of the offset is to "substantially align the tie rod with the upper and lower arm" to reduce bump steer (ʼ083 Patent, col. 2:38-41). A party could argue that any offset achieving this functional goal, regardless of its precise magnitude, falls within the scope of the claim.
- Evidence for a Narrower Interpretation: The patent illustrates specific embodiments where the pivot point is lowered significantly, to the extent that the tie rod end may "actually contact the lower extension" at its maximum angle of travel (ʼ083 Patent, col. 6:63-67). A party could argue this language implies the term requires a substantial, downward offset similar to that depicted in the figures.
"pivot point"
- Context and Importance: The location of this point is critical for determining whether the claim limitation "closer to said lower mounting extension" is met. Its definition will anchor the infringement analysis.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term itself is not explicitly defined. A party may argue it should be given its plain and ordinary meaning, such as the geometric center of the pivotal interface between the tie rod end and the pin member's ball portion.
- Evidence for a Narrower Interpretation: The patent’s Figure 8 explicitly labels a "pivot axis 'p'" at a specific location within the ball portion (ʼ083 Patent, Fig. 8; col. 6:47-49). A party could argue that the claimed "pivot point" must correspond to this specific axis of rotation as illustrated and described in the preferred embodiment.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of infringement, stating that Defendant provides the accused kit to customers and end-users with the intent that they will assemble it in an infringing manner (Compl. ¶¶47-49). It also alleges contributory infringement, asserting the kit is a material component of the patented assembly, is especially made for infringing use, and is not a staple article of commerce with substantial non-infringing uses (Compl. ¶¶57-59).
- Willful Infringement: The willfulness allegation is based on alleged pre-suit knowledge. The complaint asserts that Defendant had notice of the ’083 Patent and its alleged infringement upon receipt of a cease and desist letter dated December 4, 2018, but continued its allegedly infringing activities (Compl. ¶¶36-37).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of geometric construction: can the terms "offset toward" and "pivot point," as used in the context of a vehicle steering assembly, be construed to read on the specific dimensions and configuration of the accused "Bump Steer Correction Kit"? The outcome will depend on whether the court adopts a broader, purpose-driven definition or a narrower one tied to the patent's specific embodiments.
- A key question for damages and enhanced liability will be one of intent: what evidence will demonstrate that Defendant, following receipt of the 2018 cease and desist letter, possessed the requisite knowledge and specific intent to encourage infringement for the claims of willfulness and induced infringement to succeed?