DCT

1:19-cv-03506

Hildebrand v. O Reilly's Auto Parts

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:19-cv-03506, D. Colo., 12/11/2019
  • Venue Allegations: Venue is alleged to be proper because both defendants are engaged in commercial sales and have "Places of doing Business" within the District of Colorado.
  • Core Dispute: Plaintiff alleges that Defendants’ sale of a specific auto part infringes a patent for a tool designed to remove difficult-to-remove threaded connecting devices like stripped nuts or bolts.
  • Technical Context: The technology relates to specialized mechanical hand tools for automotive and general repair, specifically devices that can grip and extract fasteners that conventional tools can no longer engage.
  • Key Procedural History: The complaint notes that the patent expired on September 20, 2015, and alleges the suit is timely filed within the six-year statute of limitations for damages.

Case Timeline

Date Event
1995-09-20 U.S. Patent 5,737,981 Priority Date
1998-04-14 U.S. Patent 5,737,981 Issued
2015-09-20 U.S. Patent 5,737,981 Expiration Date Alleged in Complaint
2019-12-11 Complaint Filed

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

  • Patent Identification: U.S. Patent No. 5,737,981, REMOVAL DEVICE FOR THREADED CONNECTING DEVICES, issued April 14, 1998. (’981 Patent)

The Invention Explained

  • Problem Addressed: The patent addresses the common problem of being unable to remove a nut or bolt because its head has become worn, stripped, or damaged, preventing a standard socket or wrench from getting a proper grip. (’981 Patent, col. 1:20-34).
  • The Patented Solution: The invention is a socket-like device with a tapered internal opening. This opening contains threads that run in the opposite direction to the threads of the fastener to be removed (e.g., the device has left-hand threads to remove a standard right-hand-threaded nut). When the device is placed over a damaged nut and turned in the "unscrew" direction, its internal threads are designed to bite into and grip the damaged fastener, allowing the user to apply torque and remove it. (’981 Patent, col. 3:32-49; Abstract).
  • Technical Importance: This approach provides a dedicated tool to solve a frequent and frustrating mechanical problem for which general-purpose tools like locking pliers are often ineffective or cause further damage. (’981 Patent, col. 1:24-34).

Key Claims at a Glance

  • The complaint asserts claims 1-14. (’971 Patent, col. 4:41; Compl. ¶9). Independent claims 1, 12, and 13 are asserted.
  • Claim 1 (Independent) requires:
    • A body with a first and second end, and an opening extending from the first end.
    • The opening is defined by an internal surface and is sized to receive a threaded connecting device.
    • The internal surface is threaded in a direction opposite to the fastener to be removed.
    • The opening continuously tapers from a larger first diameter to a smaller second diameter.
    • The opening extends only a portion of the distance between the first and second end.
    • The second end includes an opening for engagement with a conventional removal tool (e.g., a socket wrench).
    • Rotation of the body causes its internal threading to engage and rotate the connecting device for removal.
  • The complaint asserts all dependent claims. (Compl. ¶9).

III. The Accused Instrumentality

Product Identification

The complaint identifies the accused product as "Part Number 'M980'". (Compl. ¶4).

Functionality and Market Context

The complaint alleges that Defendants were "selling the invention." (Compl. ¶6). It further alleges that infringing sales of "Part Number 'M980'" were purchased from Defendants. (Compl. ¶4). The complaint does not provide any specific technical description of how Part Number M980 operates or what its features are, other than to characterize it as the patented invention. No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint does not contain a claim chart or detailed, element-by-element infringement allegations. The analysis below is based on the general allegation that the sale of "Part Number 'M980'" infringes the patent. (Compl. ¶¶4, 8, 9).

’981 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a body having a first end and a second end, the first end including an opening which extends toward the second end of the body; The complaint alleges infringement by "Part Number 'M980'" without describing its specific physical structure. ¶¶4, 8 col. 4:44-46
the opening is defined by an internal surface of the body and is sized to receive a threaded connecting device threaded in a first direction, wherein the internal surface is threaded in a second direction opposite the first direction... The complaint makes a general allegation of infringement without specifying the threading direction or other features of the accused product. ¶¶4, 8, 9 col. 4:47-52
the opening continuously tapers from a first diameter at the first end to a second diameter as the opening extends toward the second end, where, in the first diameter is larger than the second diameter; The complaint does not specify whether the accused product possesses a continuously tapering opening. ¶¶4, 8, 9 col. 4:53-56
said opening extends only a portion of a distance between the first end and the second end of the body; The complaint does not provide details on the depth of the opening in the accused product. ¶¶4, 8, 9 col. 4:57-59
said second end includes an opening designed for engagement with conventional connecting elements used in a removal tool... The complaint does not describe the engagement mechanism of the accused product. ¶¶4, 8, 9 col. 4:60-63
wherein rotation of the body causes said threading on the internal surface of the removal device to engage the threaded connecting device causing the threaded connecting device to rotate... The complaint alleges infringement by sale, implying the accused product is capable of performing this function. ¶¶8, 9 col. 4:64-68

Identified Points of Contention

  • Evidentiary Question: The primary question is factual: does the accused "Part Number 'M980'" actually practice every element of the asserted claims? The complaint offers no technical evidence, diagrams, or product descriptions to substantiate its conclusory allegation of infringement.
  • Scope Questions: A potential dispute may arise over the scope of "threaded in a second direction opposite the first direction." The analysis will question whether the internal surface of the accused product contains actual, formed threads as described in the patent, or another gripping mechanism like flutes or cams that Plaintiff may argue is equivalent.

V. Key Claim Terms for Construction

The Term

"threaded in a second direction opposite the first direction"

Context and Importance

This term is the central inventive concept of the patent. The infringement analysis for every asserted claim will depend on whether the internal surface of the accused product meets this limitation. Practitioners may focus on this term because it distinguishes the invention from prior art that might use un-threaded gripping surfaces.

Intrinsic Evidence for Interpretation

  • Evidence for a Broader Interpretation: The complaint does not provide a basis for analysis. A party arguing for a broader view might point to the patent's overall objective of "engaging" a damaged fastener, suggesting the term should not be limited to perfectly formed, helical threads but could encompass any surface structure that uses an opposite rotational force to grip.
  • Evidence for a Narrower Interpretation: The specification provides an explicit example: "if the threaded connecting device has a right hand thread (regular thread), then the internal surface 22 of the body 12 will be threaded with a left hand thread (reverse thread)." (’981 Patent, col. 3:39-43). This language, along with numerous references to "threading" (e.g., '28') and drawings showing distinct threads (Fig. 1), could support a narrower construction requiring a conventional, helical thread structure.

VI. Other Allegations

Indirect Infringement

The complaint does not allege indirect infringement.

Willful Infringement

The complaint alleges that "at least Defendant O'Reilly's" committed infringing acts "after having been notified that said acts infringed U.S. Patent 5,737,981." (Compl. ¶11). The basis for willfulness appears to be post-notification conduct, though the nature and timing of the notification are not specified.

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

This case, as pled, presents fundamental questions of proof and specificity rather than nuanced technical disputes. The key issues for the court will likely be:

  1. A core evidentiary question: Can the Plaintiff produce evidence demonstrating that "Part Number 'M980'" contains every element of an asserted claim? The complaint's lack of specific factual allegations connecting the accused product to the claim limitations may be an early focus of the litigation.

  2. A central issue of claim scope: Assuming the accused product has an internal gripping surface, the case will turn on whether that surface is "threaded in a second direction opposite the first direction" as construed by the court. The definition of "threaded" will be critical to determining infringement.