DCT
8:24-cv-01651
Maxx Group LLC v. Uriah Products LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Maxx Group LLC (California)
- Defendant: Uriah Products, LLC (Missouri) and Forcome Distributing, Inc. (Missouri)
- Plaintiff’s Counsel: Rhema Law Group, P.C.
- Case Identification: 8:24-cv-01651, C.D. Cal., 07/29/2024
- Venue Allegations: Venue is asserted based on Plaintiff's principal place of business being in the district and Defendants' alleged purposeful availment through selling, marketing, and distributing goods within the district.
- Core Dispute: Plaintiff seeks declaratory judgments that its "MaxxHaul Mount" trailer hitch does not infringe Defendants' patent related to adjustable hitch assemblies, and that the patent is invalid due to alleged prior art sales.
- Technical Context: The dispute concerns the mechanical design of adjustable trailer hitches, a common accessory for trucks and SUVs used to accommodate trailers of varying heights.
- Key Procedural History: The action follows Defendants' pre-suit enforcement activities, which allegedly included filing an infringement complaint with Amazon, resulting in the delisting of Plaintiff’s product in October 2023. Plaintiff alleges it provided Defendants with detailed non-infringement arguments in December 2023 and April 2024, but Defendants refused to withdraw the Amazon complaint and instead offered to license the patent.
Case Timeline
| Date | Event |
|---|---|
| 2015 | Plaintiff alleges it began selling "similar but different versions" of its mount, asserted as prior art. |
| 2017-04-11 | '846 Patent Priority Date (Provisional App. 62/484,117). |
| 2020-12-08 | '846 Patent Issued. |
| 2021-06 | Plaintiff began selling the accused "MaxxHaul Mount" on Amazon. |
| 2023-10 | Defendants allegedly filed an Amazon infringement complaint, leading to product delisting. |
| 2023-11-02 | Defendants sent a cease and desist letter to Plaintiff. |
| 2023-12-05 | Plaintiff's counsel sent a response letter to Defendants asserting non-infringement. |
| 2024-04-25 | Plaintiff's new counsel sent another correspondence with a detailed non-infringement claim chart. |
| 2024-05-06 | Defendants' counsel allegedly confirmed refusal to withdraw the Amazon complaint without a license agreement. |
| 2024-07-29 | Complaint for Declaratory Judgment filed. |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,857,846 - "Adjustable Hitch Assembly"
The Invention Explained
- Problem Addressed: The patent’s background section states its relation to "ball and socket type hitch apparatus" for land vehicles ('846 Patent, col. 1:12-14). The invention provides a structure for vertically adjusting the height of a trailer hitch ball to match different trailer tongue heights.
- The Patented Solution: The patent describes an assembly featuring a main L-shaped "hitch bracket" with a vertical "tenon portion" and a separate C-shaped "hitch-ball mounting block" ('846 Patent, col. 2:56-62). This mounting block is designed to slide vertically along the tenon. A central feature of the mounting block is the use of "in-turned flanges" on its arms that "collectively define a slotted mortise hole" for receiving the tenon, a structure illustrated in the patent's exploded view (e.g., '846 Patent, Fig. 3; col. 3:4-7, 32-41).
- Technical Importance: The patent discloses manufacturing the main components from a monolithic aluminum extrusion, which is then sliced into individual units, a method that may offer a strong and relatively lightweight design ('846 Patent, col. 2:63-65, col. 3:11-16).
Key Claims at a Glance
- The complaint asserts non-infringement and invalidity with respect to the '846 Patent, specifically referencing independent claims 1 and 9 (Compl. ¶10, ¶38).
- Independent Claim 1 requires, among other elements:
- A hitch bracket, a vertically-adjustable hitch-ball mounting block, hitch pins, and a hitch ball.
- The mounting block comprising "a web, arms extending out of the web, and in-turned flanges on the arms spaced away from the web which collectively define a slotted mortise hole aligned generally on a vertical axis... for receiving the tenon portion for sliding elevational adjustability thereon."
- Independent Claim 9 is similar to claim 1 but is directed to an embodiment comprising "two hitch balls" ('846 Patent, col. 7:4-5). It also recites the identical "in-turned flanges... which collectively define a slotted mortise hole" limitation.
- The complaint does not explicitly reserve the right to assert dependent claims but seeks a declaration of non-infringement of "any claims" of the patent (Compl. ¶23).
III. The Accused Instrumentality
Product Identification
The accused product is the "MaxxHaul Mount," sold on Amazon under ASIN B08MQZX35V (Compl. ¶8, ¶20).
Functionality and Market Context
- The MaxxHaul Mount is an adjustable ball mount for vehicle trailer hitches (Compl. ¶8). A photograph of the product is included in the complaint (Compl. ¶8, p. 3).
- The complaint’s core technical argument is that the accused product's mounting block lacks the "in-turned flanges" and "slotted mortise hole" of the patent. Instead, it is alleged to have an open C-shaped structure that can be installed "horizontally" onto a hitch bracket, rather than being required to slide on vertically from one end (Compl. ¶15-18). The complaint provides an image purporting to show this horizontal installation method (Compl. p. 5, "MaxxHaul Mount Installation").
- The complaint alleges the product is a valuable part of Plaintiff's business and that its removal from Amazon has resulted in lost sales and harm to its Amazon Seller Performance Score (Compl. ¶1, ¶18).
IV. Analysis of Infringement Allegations
As this is a complaint for declaratory judgment of non-infringement, the following table summarizes the Plaintiff's asserted basis for why its product does not meet the limitations of the patent claims.
'846 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| wherein the vertically-adjustable hitch-ball mounting block comprises a web, arms extending out of the web, and in-turned flanges on the arms spaced away from the web which collectively define a slotted mortise hole aligned generally on a vertical axis and having a generally rectilinear cross-section for receiving the tenon portion for sliding elevational adjustability thereon; | The complaint alleges the accused product does not contain "in-turn flanges" that define a "slotted mortise hole." Instead, it is described as having an open C-shaped channel that allows for horizontal, rather than vertical, installation. A partial image of the accused product is provided to show this structure. | ¶12, ¶15, p. 5 | col. 3:4-7 |
- Identified Points of Contention:
- Scope Questions: The primary dispute appears to be whether the accused product's open, C-shaped mounting structure can be construed to meet the "in-turned flanges... which collectively define a slotted mortise hole" limitation. The complaint highlights this specific claim language, using an annotated version of the patent's Figure 5 to illustrate the claimed flanges (Compl. ¶12, p. 4).
- Technical Questions: A key factual question for the court will be the manner in which the accused product is installed and adjusted. The complaint alleges a horizontal installation method that it argues is fundamentally different from the "sliding elevational adjustability" on a vertical axis described for the patented invention ('846 Patent, col. 10:40-41; Compl. ¶15-19).
V. Key Claim Terms for Construction
- The Term: "in-turned flanges on the arms ... which collectively define a slotted mortise hole"
- Context and Importance: The construction of this phrase appears to be dispositive for the infringement analysis. The Plaintiff’s entire non-infringement case, as presented in the complaint, is based on the argument that its product lacks this specific structure (Compl. ¶12). Practitioners may focus on this term because its definition will determine whether the accused product's open C-channel design is equivalent to the patent's more enclosed structure.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The complaint does not provide sufficient detail for analysis of potential broader interpretations.
- Evidence for a Narrower Interpretation: The specification describes the flanges as "terminal flanges (75) that come back toward each other" ('846 Patent, col. 3:5-7) and states that these flanges "define the slot that lend to the description of the mortise hole 82 as a slotted mortise hole" ('846 Patent, col. 3:32-34). This language, combined with figures like Figure 5, may support a narrower construction that requires distinct, inward-projecting structures that form a partially enclosed channel necessitating vertical, sliding installation.
VI. Other Allegations
- Invalidity: The complaint includes a count for a declaratory judgment of patent invalidity (Compl. Count IV, ¶37-41). The basis for this allegation is 35 U.S.C. § 102(b), with the Plaintiff asserting that it sold "similar but different versions" of its "MaxxHaul Mount" product as early as 2015, more than one year before the patent’s earliest priority date of April 11, 2017 (Compl. ¶39).
- State Law Claims: The complaint alleges Tortious Interference with Economic Relations and Unfair Competition under California law (Compl. Counts II & III). These claims are based on allegations that Defendants knowingly and in bad faith enforced a patent they were informed was not infringed, with the intent to disrupt Plaintiff's business relationship with Amazon and its customers (Compl. ¶28, ¶34).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of claim construction: can the phrase "in-turned flanges... which collectively define a slotted mortise hole," which the patent specification links to a structure requiring vertical sliding, be construed to cover the accused product's open C-shaped channel that allegedly permits horizontal installation?
- The case presents a significant invalidity challenge: does the Plaintiff's alleged sale of "similar... versions" of its product starting in 2015 qualify as an on-sale bar under 35 U.S.C. § 102, thereby invalidating the '846 Patent, which has a 2017 priority date?
- A third key question relates to the state law claims: did Defendants' enforcement of the '846 Patent via Amazon's takedown process, particularly after receiving detailed non-infringement arguments from the Plaintiff, constitute tortious interference or unfair competition under California law?