DCT
1:18-cv-00710
Let's Go Aero Inc v. Amazon.com Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Let's Go Aero, Inc. (Colorado)
- Defendant: Amazon.com, Inc. (Delaware)
- Plaintiff’s Counsel: S&D Law; Berg Hill Greenleaf Ruscitti LLP
- Case Identification: 1:18-cv-00710, D. Colo., 03/26/2018
- Venue Allegations: Plaintiff alleges venue is proper in the District of Colorado because Defendant Amazon regularly transacts business in the district, including selling or offering to sell the accused infringing products to customers located there.
- Core Dispute: Plaintiff alleges that Defendant’s sale of third-party vehicle towing products, specifically hitch pins and bicycle racks, infringes Plaintiff’s utility and design patents.
- Technical Context: The technology at issue relates to the recreational and cargo transport industry, focusing on mechanical devices designed to secure accessories to a vehicle's receiver hitch and reduce rattling.
- Key Procedural History: The complaint alleges that a license agreement between Plaintiff and a third-party manufacturer, Cequent, was terminated in January 2012. Plaintiff alleges that after this date, Amazon began selling infringing products supplied by Cequent and another manufacturer, Wyers Products Group. This prior licensing history may be relevant to questions of damages and willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2000-09-25 | Priority Date for ’725 and ’550 Patents |
| 2003-08-26 | Issue Date for U.S. Patent No. 6,609,725 |
| 2005-09-20 | Issue Date for U.S. Patent No. 6,945,550 |
| 2007-04-05 | Priority Date for D684,917, D717,716, and D717,717 Patents |
| 2012-01-28 | Termination of Cequent's license agreement with Plaintiff |
| 2012-08-29 | Priority Date for ’456 Patent |
| 2012-12-14 | Priority Date for D722,289 Patent |
| 2013-06-25 | Issue Date for U.S. Design Patent No. D684,917 |
| 2014-09-01 | (Approx.) Amazon allegedly begins selling infringing products from Wyers |
| 2014-11-18 | Issue Date for U.S. Patent No. 8,889,456 |
| 2014-11-18 | Issue Date for U.S. Design Patent No. D717,716 |
| 2014-11-18 | Issue Date for U.S. Design Patent No. D717,717 |
| 2015-02-10 | Issue Date for U.S. Design Patent No. D722,289 |
| 2018-03-26 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,609,725 - Securing Device for Receiver Hitch Assemblies, issued Aug. 26, 2003
The Invention Explained
- Problem Addressed: The patent’s background section describes a problem common to receiver-type trailer hitches: the necessary clearance between the outer shank tube (of an accessory like a bike rack) and the inner receiver tube (on the vehicle) causes the components to "rattle or chatter," which can be an annoyance and potentially cause damage to the trailer or carrier (ʼ725 Patent, col. 1:32-41).
- The Patented Solution: The invention is a securing device that actively clamps the shank tube against the receiver tube to eliminate movement. It consists of a hitch pin with a threaded portion and a corresponding spring-loaded nut assembly. The nut is placed inside the hollow shank tube, held in position by the spring. The pin is inserted through the aligned holes of the receiver and shank, and then rotated to engage the nut. This rotational tightening draws the nut against the inside wall of the shank tube, pressing the opposite wall of the shank tube firmly against the receiver tube, thereby preventing rattle (ʼ725 Patent, Abstract; col. 2:6-21, Fig. 5).
- Technical Importance: The invention provided a solution to the rattling problem that could be used as an "after market" device with most existing hitch systems, without requiring special tools or modification of the receiver or shank (ʼ725 Patent, col. 2:1-6).
Key Claims at a Glance
- The complaint asserts claims 1, 2, 3, and 4, with Claim 1 being the sole independent claim asserted (Compl. ¶27).
- Independent Claim 1 requires:
- An elongated pin with proximal, mid, and distal portions.
- A head portion on the proximal end of the pin.
- A threaded portion on the mid-portion of the pin.
- A nut with a mating threaded portion.
- A spring mechanism for holding the nut within the shank tube and aligned with the shank's side holes.
- A locking mechanism for engaging the distal end of the pin to lock it in place.
- The complaint does not explicitly reserve the right to assert other claims.
U.S. Patent No. 6,945,550 - Securing Device for Receiver Hitch Assemblies, issued Sep. 20, 2005
The Invention Explained
- Problem Addressed: As a continuation of the application that led to the ’725 Patent, this patent addresses the identical problem of rattling and relative movement between a shank tube and a receiver tube in a hitch assembly due to necessary manufacturing clearances (ʼ550 Patent, col. 1:30-38).
- The Patented Solution: This patent claims the method of using the anti-rattle device. The claimed method involves the steps of providing the pin and nut components, aligning the nut inside the shank tube, inserting the shank into the receiver, passing the pin through all aligned holes, and then engaging the pin and nut to tighten the assembly until the shank tube is "firmly engaged" by the inner wall of the receiver tube (ʼ550 Patent, col. 5:1-18).
- Technical Importance: This patent protects the method of use for the anti-rattle device, providing a different scope of protection than the apparatus claims of the parent ’725 Patent.
Key Claims at a Glance
- The complaint asserts claims 1, 2, 3, and 6, with Claim 1 being the sole independent claim asserted (Compl. ¶28).
- Independent Claim 1 requires the steps of:
- Providing an elongated pin with a threaded portion.
- Providing a nut with a threaded portion.
- Aligning the nut within the shank tube with its opposing side holes.
- Inserting the shank tube into the receiver tube to align their respective holes.
- Inserting the pin through the aligned holes of both tubes.
- Engaging the pin and nut until the shank tube is firmly engaged by the inner wall of the receiver tube.
- The complaint does not explicitly reserve the right to assert other claims.
U.S. Patent No. 8,889,456 - Method of Fabricating Uniformly Distributed Self-Assembled Solder Dot Formation for High Efficiency Solar Cells, issued Nov. 18, 2014
- Technology Synopsis: The complaint identifies this patent as relating to a "VME Bike Rack" product (Compl. ¶17). However, the text and figures of the patent itself describe a method for fabricating photovoltaic (solar cell) devices. The method involves using a "gettering process" and annealed solder dots to create an etch mask for forming cone-shaped pillars on a substrate to improve light absorption ('456 Patent, Abstract). There is a significant discrepancy between the technology described in the patent and the product category alleged in the complaint.
- Asserted Claims: The complaint asserts claims 1-6 (Compl. ¶29).
- Accused Features: The complaint alleges that Amazon's sale of "V rack bicycle racks, under the Sport Wing brand or other label" infringes the '456 Patent (Compl. ¶51).
Design Patents
- Patent Identification: U.S. Design Patent Nos. D684,917 (V-Shaped Bicycle Carrier); D717,716 (V Trunk Mount Bicycle Carrier); D717,717 (V Folding Wings Bicycle Carrier); and D722,289 (V-Shaped Four Bicycle Carrier).
- Technology Synopsis: These patents protect the ornamental designs for various V-shaped bicycle carriers. The claimed designs consist of the visual appearance of the carriers, characterized by their V-shaped frame, arms, and mounting components, as depicted in the patent figures (e.g., D684,917, Fig. 1).
- Asserted Claims: The complaint asserts infringement of all four design patents (Compl. ¶29).
- Accused Features: The complaint alleges that certain bicycle racks sold by Amazon infringe the patented ornamental designs (Compl. ¶1, ¶29).
III. The Accused Instrumentality
Product Identification
- The complaint identifies two categories of accused products: those related to the "Silent Hitch Pin" ("SHP") and those related to the "LGA Bike Rack" (Compl. ¶1). Specific examples include towing products named "TAR 300" and "Anti-Rattle Pin Receiver Pin" supplied by Wyers Products Group, and V-rack bicycle racks sold under the "Sport Wing brand" (Compl. ¶3, ¶51). These products are collectively referred to as the "Cequent Accused Products" and "Wyers Accused Products" (Compl. ¶1-4).
Functionality and Market Context
- The complaint alleges the accused products are "infringing copies of LGA's patented designs" (Compl. ¶24). The accused hitch pins are for securing accessories to a vehicle's hitch receiver, while the accused bike racks are for transporting bicycles (Compl. ¶1). The complaint alleges that Amazon previously sold licensed versions of these products from a third party, Cequent, but began selling unauthorized, infringing versions from Cequent and Wyers after the license was terminated (Compl. ¶20, ¶24, ¶31). It is further alleged that Amazon marketed these products to the public as if they were genuine LGA products (Compl. ¶31, ¶33).
- No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint makes general allegations of infringement without providing an element-by-element mapping of the accused products to the patent claims.
’725 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| an elongated pin having a proximal end portion, a mid-portion and a distal end portion | The complaint alleges that towing products sold by Amazon infringe this claim, but does not specify which components meet each limitation (Compl. ¶27). | ¶27 | col. 5:2-4 |
| a head portion on said proximal end portion of said elongated pin | The complaint alleges that towing products sold by Amazon infringe this claim, but does not specify which components meet each limitation (Compl. ¶27). | ¶27 | col. 5:5-6 |
| a threaded portion on said mid-portion of said elongated pin | The complaint alleges that towing products sold by Amazon infringe this claim, but does not specify which components meet each limitation (Compl. ¶27). | ¶27 | col. 5:7-8 |
| a nut having a threaded portion for mating engagement with said threaded portion on said elongated pin | The complaint alleges that towing products sold by Amazon infringe this claim, but does not specify which components meet each limitation (Compl. ¶27). | ¶27 | col. 5:9-10 |
| a spring mechanism for holding said nut within the shank tube and aligned with the opposing side holes of the shank tube | The complaint alleges that towing products sold by Amazon infringe this claim, but does not specify which components meet each limitation (Compl. ¶27). | ¶27 | col. 5:11-14 |
| a locking mechanism for engaging said distal end of said elongated pin to lock said pin on the shank tube and the receiver tube | The complaint alleges that towing products sold by Amazon infringe this claim, but does not specify which components meet each limitation (Compl. ¶27). | ¶27 | col. 5:15-18 |
’550 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| providing an elongated pin | The complaint alleges infringement by the sale of products intended for an infringing use, but does not detail the specific infringing actions (Compl. ¶28, ¶51). | ¶28, ¶51 | col. 5:1-2 |
| providing a threaded portion on said elongated pin | The complaint alleges infringement by the sale of products intended for an infringing use, but does not detail the specific infringing actions (Compl. ¶28, ¶51). | ¶28, ¶51 | col. 5:3-4 |
| providing a nut having a threaded portion for engagement... | The complaint alleges infringement by the sale of products intended for an infringing use, but does not detail the specific infringing actions (Compl. ¶28, ¶51). | ¶28, ¶51 | col. 5:5-7 |
| aligning said nut within the shank tube with opposing side holes... | The complaint alleges infringement by the sale of products intended for an infringing use, but does not detail the specific infringing actions (Compl. ¶28, ¶51). | ¶28, ¶51 | col. 5:8-10 |
| inserting the shank tube within the receiver tube until the opposing side holes...are aligned... | The complaint alleges infringement by the sale of products intended for an infringing use, but does not detail the specific infringing actions (Compl. ¶28, ¶51). | ¶28, ¶51 | col. 5:11-13 |
| inserting said elongated pin through the opposing side holes... | The complaint alleges infringement by the sale of products intended for an infringing use, but does not detail the specific infringing actions (Compl. ¶28, ¶51). | ¶28, ¶51 | col. 5:14-16 |
| engaging said threaded portion of said elongated pin with said threaded portion of said nut... | The complaint alleges infringement by the sale of products intended for an infringing use, but does not detail the specific infringing actions (Compl. ¶28, ¶51). | ¶28, ¶51 | col. 5:17-21 |
- Identified Points of Contention:
- Pleading Sufficiency: A threshold issue is whether the complaint’s conclusory allegations of infringement, which lack element-by-element detail, meet federal pleading standards. The analysis will depend on evidence adduced during discovery.
- Technical Mismatch (’456 Patent): The most significant point of contention is the subject matter of the ’456 Patent (solar cell fabrication) compared to the accused products (bicycle racks). This discrepancy raises the question of whether the patent was asserted in error and will require clarification or amendment by the plaintiff.
- Scope Questions: For the ’725 Patent, the interpretation of "spring mechanism" and "locking mechanism" will be critical. The dispute may center on whether the accused products use structures that fall within the scope of these terms as construed by the court.
V. Key Claim Terms for Construction
The Term: "spring mechanism" (’725 Patent, Claim 1)
- Context and Importance: This term is central to the invention's anti-rattle function. The scope of this term will determine what types of resilient or positioning structures within an accused device constitute infringement. Practitioners may focus on this term because its definition could either limit the claim to the specific spring shown or expand it to cover a wider range of technical alternatives.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification suggests alternatives, stating that "other resilient mechanism can be used as well," including an "elastomer body" in lieu of a spring (ʼ725 Patent, col. 4:1-4). This may support a functional interpretation covering any resilient member that holds the nut in alignment.
- Evidence for a Narrower Interpretation: The preferred embodiment describes and depicts a specific "compression spring 66" that is attached to one side of the nut (ʼ725 Patent, col. 3:50-55; Fig. 4). This may support a narrower structural interpretation tied to a distinct spring element.
The Term: "locking mechanism" (’725 Patent, Claim 1)
- Context and Importance: This term defines how the pin is secured after installation, preventing it from loosening or being removed. Its construction will determine whether simple fasteners like cotter pins or more complex integrated locks are covered by the claim.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states broadly that "A lock or clip can be attached to the end of the hitch pin" and later mentions a "clip pin" as an option ('725 Patent, col. 2:24-25; col. 4:49-50). This language suggests the term encompasses a variety of known locking and securing means.
- Evidence for a Narrower Interpretation: The primary embodiment shows a specific "lock 70" that engages a "locking groove 52" on the "tapered end 54" of the pin (ʼ725 Patent, col. 3:56-59; Fig. 3). An argument could be made to limit the term to keyed locks or mechanisms that engage a dedicated groove, rather than simpler clips.
VI. Other Allegations
- Indirect Infringement: The complaint includes a specific count for inducement and contributory infringement of the ’550 and ’456 Patents (Compl. ¶49-52). The factual basis alleged is that Amazon sold the accused products with "actual knowledge" of the patents and with "knowledge that the products infringed when used as intended" (Compl. ¶50-51).
- Willful Infringement: The complaint alleges that Amazon’s infringement has been "willful, deliberate, and intentional and with full knowledge of LGA's rights" (Compl. ¶45). The basis for this allegation appears to be that the infringement began after the termination of a license agreement with Cequent, which may suggest Amazon had pre-suit knowledge of the patents and LGA's rights dating from at least January 29, 2012 (Compl. ¶42, ¶45).
VII. Analyst’s Conclusion: Key Questions for the Case
- A primary issue for the court will be one of factual accuracy: is the assertion of U.S. Patent No. 8,889,456 against bicycle racks a correctable clerical error in the complaint, or does it represent a fundamental and potentially fatal flaw in that portion of the plaintiff's infringement claim as pleaded?
- A key evidentiary question will be one of infringement mapping: given the complaint's lack of specific factual allegations mapping product features to claim limitations, can the plaintiff produce sufficient evidence to show that the accused "Silent Hitch Pin" products practice every element of the asserted claims of the ’725 and ’550 patents, particularly the claimed "spring mechanism"?
- For the design patents, the central legal question will be one of visual identity: would an ordinary observer, viewing the accused bicycle racks, be deceived into believing they are the same as the designs protected by the D'917, D'716, D'717, and D'289 patents, thus establishing infringement under the applicable legal standard?