Hildebrand v. O Reilly's Auto Parts

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: David L. Hildebrand (Colorado)
  • Defendant: O'Reilly's Auto Parts & Advance Auto Parts (Alleged to have numerous store locations in Colorado)
  • Plaintiff’s Counsel: David L. Hildebrand (Pro Se)
• Case Identification: 1:19-cv-03506, D. Colo., 12/11/2019
• Venue Allegations: Venue is based on the allegation that both Defendants engage in commercial sales and have "Places of doing Business" within the District of Colorado.
• Core Dispute: Plaintiff alleges that Defendants' sales of a specific auto part infringe a patent related to a tool for removing damaged or stripped threaded fasteners, such as nuts and bolts.
• Technical Context: The technology falls within the field of mechanical hand tools, specifically devices designed for automotive repair and maintenance to solve the common problem of extracting fasteners with worn heads.
• Key Procedural History: The complaint notes that the patent-in-suit expired on September 20, 2015. It alleges the action is timely filed within the six-year statute of limitations for patent damages, which would permit recovery for infringing sales that occurred between December 11, 2013, and the patent's expiration date.

Case Timeline

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 5,737,981 - "REMOVAL DEVICE FOR THREADED CONNECTING DEVICES"

• Patent Identification: U.S. Patent No. 5,737,981, titled "REMOVAL DEVICE FOR THREADED CONNECTING DEVICES," issued on April 14, 1998.

The Invention Explained

• Problem Addressed: The patent addresses the difficulty of removing a threaded fastener, such as a nut or bolt, after its head has become worn or stripped, preventing a standard socket or wrench from getting a proper grip (ʼ981 Patent, col. 1:20-34).
• The Patented Solution: The invention is a removal tool shaped like a socket. Its core feature is a tapered internal opening containing threads that are oriented in the opposite direction to the threads of the fastener being removed. For a standard fastener with a right-hand thread, the tool has a left-hand thread. When the tool is placed over the damaged fastener head and turned in the removal direction (counter-clockwise), the tool's internal reverse threads bite into and grip the head, generating the torque needed to loosen and extract the fastener (’981 Patent, Abstract; col. 2:1-18). The hollow body of the device allows it to be used on studs of varying lengths (ʼ981 Patent, col. 3:13-16).
• Technical Importance: This design provides a specialized tool that can effectively remove damaged fasteners without resorting to more destructive or less reliable methods, such as using locking pliers or cutting the fastener off (ʼ981 Patent, col. 1:25-34).

Key Claims at a Glance

The complaint asserts infringement of claims 1-14 (Compl. ¶9). Claim 1 is the sole independent claim from which the others depend.

• Essential elements of Independent Claim 1:
  • A body with a first end and a second end.
  • An opening at the first end, defined by an internal surface, which is sized to receive a threaded connecting device (e.g., a nut or bolt).
  • The internal surface is threaded in a direction "opposite" to the direction in which the connecting device is threaded.
  • The opening "continuously tapers" from a larger diameter at the first end to a smaller diameter as it extends toward the second end.
  • The opening extends "only a portion of a distance" between the first and second ends.
  • The second end includes an opening for engagement with a "removal tool" (e.g., a socket wrench).
  • Rotation of the body causes the internal threading to engage the connecting device and rotate it in the appropriate removal direction.

III. The Accused Instrumentality

Product Identification

• The accused product is identified by "Part Number 'M980'" (Compl. ¶4).

Functionality and Market Context

• The complaint alleges that this part number corresponds to the patented "invention" and was sold by Defendants O'Reilly's Auto Parts and Advance Auto Parts (Compl. ¶¶4, 8). The complaint does not provide any further description of the accused product's structure, features, or operation. No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint alleges in general terms that Defendants infringed claims 1-14 of the ’981 Patent by selling the "M980" product (Compl. ¶¶8-9). It does not contain a detailed mapping of accused product features to specific claim limitations. The following chart summarizes the infringement theory for the independent claim based on the complaint's overarching allegation that the "M980" product is the "said invention."

’981 Patent Infringement Allegations

• Identified Points of Contention:
  • Pleading Sufficiency: A primary procedural question is whether the complaint's general allegation that Defendants sold the "said invention" (Compl. ¶8), without providing any factual detail mapping the features of the "M980" product to the specific limitations of the claims, satisfies federal pleading standards.
  • Technical Questions: The central technical question for infringement will be whether the accused "M980" product actually incorporates the key limitations of claim 1. Specifically, discovery would need to establish whether the product possesses an internal surface that is both (1) "continuously taper[ed]" and (2) "threaded in a second direction opposite" that of a standard fastener. The complaint provides no direct evidence on these structural points.

V. Key Claim Terms for Construction

• The Term: "threaded in a second direction opposite the first direction"

  • Context and Importance: This term recites the core technical concept of the invention. The outcome of the infringement analysis will depend entirely on whether the accused product's internal surface has this reverse-threading feature.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claims use the general term "threaded," which could be argued to encompass not just conventional helical threads but other gripping surfaces or profiles that perform the same function of biting into a fastener when rotated in one direction. The specification also discloses "cutting notches" that assist the threads in cutting into the fastener (ʼ981 Patent, col. 3:50-62).
    • Evidence for a Narrower Interpretation: The specification provides a concrete example: if the fastener has a "right hand thread (regular thread)," the tool's internal surface "will be threaded with a left hand thread (reverse thread)" (ʼ981 Patent, col. 3:39-42). This language may suggest the term is limited to conventional, opposite-handed helical threads.

• The Term: "opening continuously tapers"

  • Context and Importance: This limitation defines the geometry that allows the tool to accommodate differently sized or worn fastener heads and to tighten its grip as it is forced over the head. Whether the accused product's internal geometry meets this description is a key infringement question.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The plain meaning of "continuously tapers" may suggest any monotonic decrease in diameter along the opening's length, not necessarily a perfectly linear one.
    • Evidence for a Narrower Interpretation: The detailed description repeatedly refers to the opening as "frustoconical" (ʼ981 Patent, col. 3:17, col. 3:19), which describes a specific geometry—a cone with the top cut off—implying a constant, linear taper. An accused product with a stepped or curved internal bore might not meet this narrower construction.

VI. Other Allegations

• Indirect Infringement: The complaint does not contain allegations of indirect infringement (inducement or contributory infringement). The allegations are limited to direct infringement under 35 U.S.C. § 271(a) (Compl. ¶9).
• Willful Infringement: The complaint alleges that "at least Defendant O'Reilly's" had knowledge of the infringement because it was "notified that said acts infringed U.S. Patent 5,737,981" (Compl. ¶11). The complaint does not specify the timing or method of this alleged notification, but claims that infringing acts after such notice were "committed willfully and intentionally" (Compl. ¶11).

VII. Analyst’s Conclusion: Key Questions for the Case

1. A central evidentiary question will be one of structural identity: Does the accused product identified as "Part Number 'M980'" actually contain the core structural limitations recited in the asserted claims, most critically the tapered internal bore with threads oriented opposite to those of a standard fastener? The complaint's lack of technical detail leaves this as the primary unresolved factual issue.
2. A threshold procedural question will be one of pleading sufficiency: Do the complaint's generalized infringement allegations, which identify an accused product by part number but do not articulate a theory of how that product meets specific claim limitations, state a plausible claim for relief sufficient to proceed to discovery?