DCT
8:17-cv-02227
Bike Builders Bible Inc v. Hyun Eui Lee
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Bike Builders Bible, Inc. (California)
- Defendant: Hyun-Eui Lee (Korea)
- Plaintiff’s Counsel: NEWHOPE LAW, PC
- Case Identification: 8:17-cv-02227, C.D. Cal., 12/21/2017
- Venue Allegations: Plaintiff alleges venue is proper because the defendant has transacted business in California, the effects of the defendant's patent allegations are felt in the district, and the defendant is an alien.
- Core Dispute: Plaintiff seeks a declaratory judgment that its "Motorcycle Fork Adapter" product does not infringe, and that the defendant's patents are invalid.
- Technical Context: The technology involves aftermarket kits designed to modify the steering geometry of a motorcycle, specifically to change the "rake" angle, without requiring permanent modifications like cutting or welding the frame.
- Key Procedural History: The action was precipitated by a cease and desist letter sent by the defendant patent-holder to the plaintiff. The complaint alleges the patents-in-suit are invalid due to an on-sale bar from a product sold in July 2008 and are also invalid for being derived from the work of a third-party inventor.
Case Timeline
| Date | Event |
|---|---|
| 2008-07-01 | Alleged first sale of "Insta Chop" product, forming basis for on-sale bar allegation |
| 2014-01-20 | Earliest Priority Date for '933 and '442 Patents |
| 2015-12-15 | U.S. Patent No. 9,211,933 Issued |
| 2016-09-06 | U.S. Patent No. 9,434,442 Issued |
| 2017-12-21 | Complaint for Declaratory Judgment Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,211,933 - "Steering Shaft Modifier," Issued Dec. 15, 2015
The Invention Explained
- Problem Addressed: The patent's background section describes the desire among motorcycle enthusiasts to modify steering geometry (rake angle), particularly to accommodate larger front wheels. It notes that conventional methods, such as cutting and welding the motorcycle frame, "severely undermine vehicle security" and may be illegal (’933 Patent, col. 1:39-42). Prior bolt-on solutions are described as potentially lacking connection strength (’933 Patent, col. 1:55-57).
- The Patented Solution: The invention is a bolt-on kit that modifies the steering angle without permanent frame alteration. It consists of a primary "frame" that attaches to the motorcycle's steering head, a new "shaft" that passes through the modifier, and a "frame block." The components are designed to be "screw-coupled" in a way that pressurizes the original steering head from both above and below, creating what is described as a secure, dual-fixing structure (’933 Patent, Abstract; col. 2:10-26; col. 6:11-18).
- Technical Importance: The described approach aims to provide a non-permanent, reversible, and structurally stable method for a common type of motorcycle customization, potentially allowing general users rather than expert mechanics to perform the modification (’933 Patent, col. 2:7-9).
Key Claims at a Glance
- The complaint identifies independent claims 1 and 10 as being asserted (Compl. ¶1, ¶20).
- Independent Claim 1 Essential Elements:
- A steering shaft penetration portion having a through hole and formed as a single part
- Wing portions connected to the steering shaft penetration portion and extending to lateral surfaces of the steering head
- A frame covering at least a portion of a front surface of the steering head
- The frame comprises an upper block extending from an upper portion of the steering shaft penetrating portion
- The upper block has a coupling hole formed therein
- The coupling hole accommodates a shaft coupling part which is inserted into the steering shaft installation portion
- Independent Claim 10 Essential Elements:
- A frame having a steering shaft penetrating portion
- A shaft penetrating through a steering shaft installation portion
- A frame block disposed in a rear side, relative to the steering shaft installation portion
- The shaft and the frame are screw-coupled to pressurize the steering head from above and below
- The frame and the frame block are coupled to pressurize an upper portion of the steering shaft installation portion and a lower surface of the steering head
U.S. Patent No. 9,434,442 - "Steering Shaft Modifier," Issued Sep. 6, 2016
The Invention Explained
- Problem Addressed: The '442 Patent, a continuation-in-part of the application leading to the '933 Patent, addresses the same technical problem of securely modifying a motorcycle's rake angle without welding (’442 Patent, col. 1:12-45).
- The Patented Solution: The solution is substantively identical to that of the '933 Patent: a multi-part, bolt-on assembly that clamps onto the motorcycle's steering head to create a new steering pivot point. The key distinctions reside in the specific claim language (’442 Patent, Abstract; col. 4:25-38).
- Technical Importance: The technical goal is the same as the parent patent: to provide a secure and user-installable method for motorcycle customization (’442 Patent, col. 2:7-11).
Key Claims at a Glance
- The complaint identifies independent claim 1 as being asserted (Compl. ¶1, ¶20).
- Independent Claim 1 Essential Elements:
- A steering shaft penetration portion having a through hole and formed as a single part
- A frame covering at least a portion of a front surface of the steering head
- The frame comprises an upper block extending from an upper portion of the steering shaft penetrating portion
- The upper block has a coupling hole formed therein
- The coupling hole mounts a shaft coupling part which is inserted to the steering shaft installation portion
- The steering shaft penetration portion has upper and lower bearing insertion portions and is positioned such that the lower bearing insertion portion is higher than a lower bearing installation portion of the steering shaft installation portion.
- The complaint does not mention assertion of any dependent claims for either patent but its prayer for relief refers to "any claims" of the patents (Prayer for Relief ¶B).
III. The Accused Instrumentality
Product Identification
The accused product is the "Bike Builders' Fork Kit" or "Bike Builders' Motorcycle Fork Adapter" (Compl. ¶14, ¶20).
Functionality and Market Context
The product is described as a "retrofit kit for Harley-Davidson motorcycles to allow adaptation to a custom motorcycle front end" (Compl. ¶20). The complaint alleges that the product is made according to a different patent, U.S. Patent 9,079,631, and that both parties sell competing fork kit assemblies (Compl. ¶1, ¶13). The central allegation of non-infringement is that the plaintiff's product omits key components required by the asserted claims (Compl. ¶14, ¶21).
- No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint seeks a declaratory judgment of non-infringement. Its theory is that the accused product is missing essential elements of the asserted claims.
'933 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| ...the frame comprises an upper block extending from an upper portion of the steering shaft penetrating portion, the upper block having a coupling hole formed therein, and wherein the coupling hole accommodates a shaft coupling part which is inserted into the steering shaft installation portion... | Allegedly not present in the accused product. The complaint states the "shaft coupling part" is omitted. | ¶1, ¶21 | col. 8:12-18 |
| (From Independent Claim 10) ...a shaft penetrating through a steering shaft installation portion of the steering head... | Allegedly not present in the accused product. The complaint states the "shaft" is omitted. | ¶1, ¶21 | col. 9:7-8 |
'442 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| ...the frame comprises an upper block extending from an upper portion of the steering shaft penetrating portion, the upper block having a coupling hole formed therein, and wherein the coupling hole mounts a shaft coupling part which is inserted to the steering shaft installation portion... | Allegedly not present in the accused product. The complaint states the "shaft coupling part" is omitted. | ¶1, ¶21 | col. 8:26-31 |
- Identified Points of Contention:
- Factual Question: The primary dispute appears to be factual: does the "Bike Builders' Fork Kit" contain components that perform the function of the claimed "shaft coupling part" and "shaft"? The complaint's assertion of non-infringement is based on the alleged absence of these specific structures (Compl. ¶21).
- Scope Question: The resolution of the factual question will depend on the scope given to the claim terms. The case raises the question of whether the plaintiff's product, allegedly designed around a different patent, avoids these limitations either literally or under the doctrine of equivalents.
V. Key Claim Terms for Construction
The complaint explicitly identifies the terms whose absence forms the basis of its non-infringement claim.
The Term: "shaft coupling part"
Context and Importance: This term appears in the asserted independent claims of both the '933 and '442 patents. Plaintiff's non-infringement argument for both patents rests on the allegation that its product omits this part (Compl. ¶21). Practitioners may focus on this term because its construction could be dispositive of infringement.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the part's function as being "configured to connect the shaft 150 and the upper block 111" (’933 Patent, col. 5:22-24). A patentee could argue this term covers any component that performs this connecting function.
- Evidence for a Narrower Interpretation: The specification describes the "shaft coupling part" as a "separate component from the frame" and illustrates a specific embodiment with an internal thread, a stop protrusion, and a step for a washer (’933 Patent, col. 5:25-36; Fig. 5). An accused infringer may argue that the term should be limited to a discrete component possessing some or all of these structural features, rather than a mere point of connection.
The Term: "shaft"
Context and Importance: This term is a key element of asserted claim 10 of the '933 patent, and plaintiff alleges it is missing from its product (Compl. ¶21). The interpretation of this term is therefore central to the infringement analysis of that claim.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent describes the shaft generally as comprising a "head portion," a "body portion," and a "connection portion" (’933 Patent, col. 2:19-23). A patentee could argue that any component with these general sections meets the definition.
- Evidence for a Narrower Interpretation: Claim 10 requires that the "shaft and the frame are screw-coupled to pressurize the steering shaft installation portion." This functional requirement, combined with specification details like the "sloped portion 153" on the shaft's head designed to provide a "push force based on rotation," suggests the term may be construed to require a specific structure capable of performing this pressurizing function (’933 Patent, col. 5:32-37, col. 9:11-13).
VI. Other Allegations
- Declaratory Judgment of Invalidity: Plaintiff seeks a declaration that the '933 and '442 patents are invalid. The complaint alleges two primary grounds:
- On-Sale Bar: It alleges that a product called the "Insta Chop" was sold in commerce in July 2008, more than one year before the patents' January 20, 2014 priority date, and that this product anticipates or renders obvious the claimed inventions (Compl. ¶18, ¶24).
- Derivation: It alleges that the defendant, whose business was a customer of a third party named Vince Costa, derived the inventions from Costa's "InstaChop" design (Compl. ¶23).
- Indirect Infringement: In its prayer for relief, the plaintiff seeks a declaration that it would not "induce or contribute to the infringement by others" (Prayer for Relief ¶B). The complaint body does not contain specific factual allegations related to indirect infringement.
VII. Analyst’s Conclusion: Key Questions for the Case
This declaratory judgment action appears to center on two fundamental and potentially case-dispositive issues for the court to resolve.
A core issue will be one of claim construction and factual comparison: Can the terms "shaft coupling part" and "shaft", as defined in the context of the patent specification, be read to encompass any component in the plaintiff's "Fork Kit"? The outcome will likely depend on whether these terms are construed broadly to cover a function, or narrowly to require specific structures allegedly absent from the plaintiff's product.
A key evidentiary question will be the plaintiff's invalidity defense: Can the plaintiff produce clear and convincing evidence that the "InstaChop" product was sold or publicly disclosed before the critical date, and that it contained all the limitations of the asserted claims? The related allegation of derivation presents an alternative, but factually intensive, path to invalidating the patents.