Wildcat Licensing Wi LLC v. Audi AG

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Wildcat Licensing WI LLC (Wisconsin)
  • Defendant: Audi AG (Germany) and Volkswagen AG (Germany)
  • Plaintiff’s Counsel: Mintz Levin Cohn Ferris Glovsky and Popeo, P.C.
• Case Identification: 1:19-cv-00833, D. Del., 05/06/2019
• Venue Allegations: Venue is based on allegations that Defendants have established minimum contacts with Delaware and have offered to sell and sold products manufactured by the allegedly infringing process within the district.
• Core Dispute: Plaintiff alleges that Defendants' overseas automotive assembly operations, which are used to manufacture vehicles imported into the U.S., infringe a patent directed to methods for error-proofing multi-fastener assembly tasks by electronically enforcing a correct sequence and torque.
• Technical Context: The technology addresses error-proofing in high-volume manufacturing, particularly in the automotive sector, where ensuring that multiple fasteners are applied in a specific sequence and with correct torque is critical for product safety and reliability.
• Key Procedural History: The complaint notes that the patent-in-suit, U.S. Reissue Patent No. RE47,220, is a narrowing reissue of an earlier patent (U.S. Patent No. 7,062,831). It states that claims of the original patent were invalidated in an inter partes review (IPR) proceeding, and the patent owner subsequently filed the reissue application, which was granted, to correct the identified errors and distinguish the claims from the prior art.

Case Timeline

Date	Event
2001-11-19	Priority Date for RE47,220 Patent
2008-01-01	Plaintiff's predecessor, LMS-Walt, ceased operations (approximate date)
2018-08-23	PTAB reverses examiner's rejection of reissue claims
2019-02-05	U.S. Reissue Patent No. RE47,220 issues
2019-05-06	Complaint filed

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

U.S. Reissue Patent No. RE47,220 - "Method for Monitoring Proper Fastening of an Article of Assembly at More Than One Location," issued February 5, 2019

The Invention Explained

• Problem Addressed: The patent describes problems in high-volume assembly lines where human operators must install multiple fasteners at a single station. These repetitive tasks can lead to accidental errors, such as fastening the same screw twice, missing a screw, or following the wrong sequence. The patent also notes that workers have been known to intentionally trick simpler systems that only count the number of fastening operations, leading to improperly assembled and potentially unsafe products. (Compl. ¶4; ’220 Patent, col. 2:5-41).
• The Patented Solution: The invention is a method for ensuring that fasteners are applied correctly by using an electronic system to enforce both sequence and torque requirements. The system uses a controller pre-loaded with the required fastening sequence and torque values for multiple locations on a component. (’220 Patent, col. 13:37-54). It senses the real-time position of the operator's fastening tool, compares it to the pre-loaded data, and enables the tool to operate only when it is at the correct location for the current step in the sequence. (’220 Patent, Fig. 4, steps 108-112). The system then measures the applied torque and requires it to match the predetermined value for that location before the operator can proceed to the next step. (’220 Patent, col. 14:34-65).
• Technical Importance: The technology provides a "fool-proof" or "error-proof" assembly method intended to improve the reliability, quality, and safety of mass-produced articles by eliminating a significant source of human error in critical fastening operations. (Compl. ¶5).

Key Claims at a Glance

• The complaint asserts infringement of at least independent claim 31. (Compl. ¶31).
• Essential elements of independent claim 31 include:
  • Providing components structurally designed to require a specific fastener sequence to reduce the risk of structural failure.
  • Holding the components in a predetermined position for assembly.
  • Providing an electronic controller with memory storing (a) location and order data for a predetermined fastening sequence and (b) predetermined torque values for each fastening location.
  • Using a fastening tool to manually fasten fasteners.
  • Sensing the position of the fastening tool.
  • Electronically comparing the sensed tool position to the stored sequence data and "enabling" the tool to insert a fastener "only if" the tool is at the correct location in the sequence.
  • Providing a "sequence output" indicating whether the sequence has been achieved.
  • When the sequence is conformed to, "measuring" torque at a first location and "requiring" it to equal a first predetermined torque value "before" the operator is allowed to insert a fastener in a second location.
  • Measuring torque at the second location and requiring it to equal a second predetermined torque value.

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are the "Defendants' Assembly Operations" used to manufacture automobiles and their component parts (e.g., transmissions, suspensions, seats) overseas for importation into the United States. (Compl. ¶¶29, 31, 32). The complaint lists numerous Audi and Volkswagen vehicle models allegedly manufactured using these operations. (Compl. ¶26).

Functionality and Market Context

The complaint alleges, on information and belief, that Defendants' assembly operations perform "error-proofing automated assembly" to prevent operator error and ensure safety. (Compl. ¶32). The allegations state that these operations use tooling from suppliers such as Atlas Copco, which provides "Virtual Station" technology to control the assembly process. (Compl. ¶¶34-35). This tooling allegedly "keeps all information about your assembly process" and ensures the tool performs "correct tightenings for your assembly" by controlling for both sequence and torque. (Compl. ¶¶35, 36). A promotional image from Atlas Copco included in the complaint depicts a virtualized assembly line environment. (Compl. ¶35, p. 10).

IV. Analysis of Infringement Allegations

RE47,220 Patent Infringement Allegations

Claim Element (from Independent Claim 31)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
"providing an electronic controller having stored in a memory thereof... (a) data representative of the location of the first fastening location... with first order data... and (b) data representative of the location of the second fastening location... with second order data..."	Defendants allegedly provide an electronic controller with stored memory containing location data (e.g., x, y, z coordinates) and data for a predetermined fastening sequence for each fastening location. (Compl. ¶43). A screenshot in the complaint shows an Atlas Copco job setup table with different "Psets" (parameter sets) and batch sizes, which allegedly corresponds to a "programmed Job function" that "automatically selects the correct tightening sequence and parameters." (Compl. ¶47, p. 22).	¶43, ¶47	col. 13:37-54
"sensing the position of the fastening tool; electronically comparing the sensed position of the fastening tool with the data representative of the location... to ensure the operator's use of the fastening tool conforms to the predetermined sequence... by (a) enabling the fastening tool... only if the operator has not inserted a fastener in the second fastening location..."	Defendants' operations allegedly use sensors to compute the position of the fastening tool. (Compl. ¶44). The system then electronically compares the sensed position with the stored location and sequence data to ensure conformity. (Compl. ¶45). The complaint alleges this is accomplished by enabling the tool only when it is in the correct position in the sequence, providing visual feedback to the operator. (Compl. ¶45). A screenshot of a display shows a red screen alerting that the tool is "out of position," which allegedly corresponds to the tool being disabled. (Compl. ¶45, p. 19).	¶44, ¶45	col. 13:61-col. 14:23
"providing a sequence output each time that the operator attempts to fasten a fastener... indicating whether the predetermined fastening sequence has been achieved..."	The system allegedly provides a sequence output on a display. (Compl. ¶46). A screenshot from an Atlas Copco video shows a "solid green display" that allegedly "says the job is done with the right torque and the correct sequence," which the complaint characterizes as the sequence output. (Compl. ¶45, p. 19).	¶45, ¶46	col. 14:24-29
"when the operator's use of the fastening tool conforms to the predetermined sequence..., (a) measuring torque applied... in the first fastening location..., (b) requiring that the torque applied... equal the first predetermined torque value before the operator is allowed to insert a fastener in the second fastening location..."	When the operator follows the sequence, the operations allegedly measure the applied torque and compare it to a predetermined value. (Compl. ¶48). The complaint alleges the system requires the correct torque at the first location before allowing the operator to proceed to the second, which "reduces the risk of structural failure." (Compl. ¶48). The complaint points to marketing materials stating the system "ensures the operator applies the correct torque in the right sequence." (Compl. ¶48, p. 22, citing a Mountz video).	¶48	col. 14:34-52

Identified Points of Contention

• Scope Questions: Claim 31 is a method claim, with infringement asserted under 35 U.S.C. § 271(g) based on the importation of products made by that method. A potential issue is whether the final imported products (e.g., automobiles) are "made by" the claimed process, which is a specific, granular assembly step, and whether the process "materially changes" the components.
• Technical Questions: The complaint's allegations regarding the specific functionality of Defendants' assembly systems rely heavily on marketing materials from a third-party tooling supplier, Atlas Copco. A central evidentiary question will be whether discovery confirms that Defendants' actual, internal processes implement the specific control logic claimed—particularly the "enabling... only if" and "requiring... before" limitations—or if they use a less rigid guidance-and-warning system. The complaint's visual evidence shows system feedback (e.g., a red or green screen) but does not definitively show a functional lockout as claimed. (Compl. ¶45, p. 19).

V. Key Claim Terms for Construction

The Term: "structurally designed so that a fastener must be inserted in the first fastening location before a fastener is inserted in the second fastening location to reduce the risk of structural failure"

• Context and Importance: This term appears to tie the claimed method to a physical necessity inherent in the components themselves, rather than an arbitrary choice of manufacturing sequence. The viability of the infringement claim may depend on whether Plaintiff can prove that the specific Audi and VW components at issue possess this structural characteristic.
• Intrinsic Evidence for Interpretation: The patent itself provides context, describing how improper fastening of screws on a seat frame can lead to failure, which suggests the "risk of structural failure" is a tangible, physical risk. (’220 Patent, col. 2:36-41). The complaint alleges this is a feature of Defendants' components but provides support by citing generic industry articles about the importance of tightening sequences for joints, not specific evidence about the accused components. (Compl. ¶40).

The Term: "enabling the fastening tool... only if..."

• Context and Importance: This term is critical as it defines the restrictive nature of the system's control logic. Practitioners may focus on whether this requires an absolute physical lockout of the tool or if a system that provides a prohibitive warning (e.g., a red light and alarm) that an operator is trained to obey meets the limitation.
• Evidence for a Broader Interpretation: A plaintiff might argue that a system providing a clear "stop" signal, which operators are required to follow, effectively "enables" the tool only under proper conditions from a process control perspective.
• Evidence for a Narrower Interpretation: The claim language "only if" and the specification's description of the controller having a connection for "activating the driver... and disabling the driver" may support a narrower construction requiring a true electromechanical lockout that physically prevents the tool from functioning. (’220 Patent, col. 6:25-29; Fig. 4, steps 110, 112).

VI. Other Allegations

Indirect Infringement

The complaint alleges inducement to infringe under 35 U.S.C. § 271(b), asserting that Defendants instruct their "suppliers" to practice the invention. (Compl. ¶50). It is alleged that Defendants had knowledge of the patent "since at least service of this Complaint," which would only support a claim for post-suit inducement. (Compl. ¶50).

Willful Infringement

The complaint alleges willful infringement, also based on knowledge obtained no earlier than the date of service of the complaint. (Compl. ¶51).

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

• Evidentiary Substantiation: A primary issue will be one of evidentiary proof versus allegation. The complaint builds its infringement theory largely on publicly available materials from a third-party tool supplier. The case will likely turn on whether Plaintiff can obtain evidence in discovery to prove that Defendants' confidential, internal assembly processes actually perform the specific, rigid control logic of claim 31—particularly the conditional "enabling... only if" and "requiring... before" limitations.
• Definitional and Factual Scope: A second core issue will involve the claim limitation requiring components to be "structurally designed" for a mandatory sequence. The dispute will center on a question of fact and scope: can Plaintiff prove that the specific automotive joints assembled by Defendants have an inherent structural need for a specific bolt order to prevent failure, or is the sequence merely a matter of preferred manufacturing practice?
• Supervening Procedural Outcome: While the analysis above addresses the merits of the complaint as filed in 2019, the provided documents include a U.S. Inter Partes Review Certificate issued in 2024 indicating that all asserted claims of the '220 Patent (claims 31-55) have been cancelled. This subsequent event likely renders the substantive infringement questions moot, and the ultimate issue for the litigation will be the legal and procedural consequences of this cancellation.