DCT
1:19-cv-00834
Wildcat Licensing Wi LLC v. Bayerische Motoren Werke AG
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Wildcat Licensing WI LLC (Wisconsin)
- Defendant: Bayerische Motoren Werke AG (Germany); BMW Manufacturing Co., LLC (Delaware); BMW of North America, LLC (Delaware)
- Plaintiff’s Counsel: Mintz Levin Cohn Ferris Glovsky and Popeo, P.C.; Bayard, P.A.
- Case Identification: 1:19-cv-00834, D. Del., 05/06/2019
- Venue Allegations: Plaintiff alleges venue is proper in the District of Delaware because two of the three defendant entities are incorporated in Delaware and have conducted business, including sales of accused products, within the district.
- Core Dispute: Plaintiff alleges that Defendant’s automobile manufacturing processes and systems infringe patents related to error-proofing methods that ensure fasteners are applied with the correct torque and in the proper sequence.
- Technical Context: The technology addresses the need for high-reliability assembly in manufacturing, particularly in the automotive industry, by using position-sensing tools and electronic controllers to prevent operator errors.
- Key Procedural History: The patents-in-suit are reissues of original patents (U.S. Patent Nos. 7,062,831 and 6,763,573). Claims of the original patents were found invalid by the Patent Trial and Appeal Board (PTAB) in inter partes review (IPR) proceedings, a decision affirmed by the Federal Circuit. The patent owner subsequently filed reissue applications with narrowed claims, which the USPTO allowed after a PTAB panel reversed an examiner's rejections, specifically noting the claims issued over the prior art from the IPRs. This history suggests the patentee has already defended the validity of the narrowed claims against a known set of prior art during prosecution.
Case Timeline
| Date | Event |
|---|---|
| 2001-11-19 | Priority Date for ’220 and ’232 Patents |
| 2018-08-23 | PTAB reverses examiner's rejections of reissue claims |
| 2019-02-05 | U.S. Patent No. RE47,220 issues |
| 2019-02-12 | U.S. Patent No. RE47,232 issues |
| 2019-05-06 | Complaint filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Reissue Patent No. RE47,220
- Patent Identification: 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: In high-volume manufacturing, such as automotive seat assembly, human operators can make errors like fastening the same screw twice or missing a screw. Traditional systems that merely count the total number of torque applications can be "tricked," leading to improperly assembled and potentially unsafe products (RE47,220 Patent, col. 2:13-29). This requires costly downstream quality control inspections (RE47,220 Patent, col. 2:41-51).
- The Patented Solution: The patent describes a "fool-proof" method that uses a position-sensing system to monitor a fastening tool's location relative to the workpiece. An electronic controller stores a predetermined sequence and required torque for multiple fastening locations (RE47,220 Patent, col. 13:5-14:65). The system enables the tool to operate only when it is at the correct location in the correct sequence and confirms the correct torque is applied, as illustrated in the control logic of Figure 4 (RE47,220 Patent, Fig. 4).
- Technical Importance: This method provides a reliable way to ensure not only that the correct torque is applied but also that the correct fastening sequence is followed, addressing a critical need for error-proofing in complex manual assembly operations (RE47,220 Patent, col. 2:55-58).
Key Claims at a Glance
- The complaint asserts at least independent claim 31 (Compl. ¶34).
- The essential elements of independent claim 31 include:
- Providing first and second physically separate components that are structurally designed to require a specific fastening sequence to reduce the risk of structural failure.
- Holding the components in a predetermined position.
- Manually fastening fasteners with a tool.
- Providing an electronic controller with stored data representing the location and required sequence for the first and second fastening locations.
- Sensing the position of the fastening tool.
- Electronically comparing the sensed tool position with the stored location and sequence data.
- Enabling the tool only when it conforms to the predetermined sequence.
- Measuring and comparing applied torque to predetermined values for each step in the sequence.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Reissue Patent No. RE47,232
- Patent Identification: RE47,232, Assembly System for Monitoring Proper Fastening of an Article of Assembly at More Than One Location, issued February 12, 2019.
The Invention Explained
- Problem Addressed: The problem is identical to that described in the '220 Patent: the risk of operator error in high-volume assembly leading to improperly fastened components (RE47,232 Patent, col. 2:12-24).
- The Patented Solution: This patent claims the physical system for implementing the error-proofing method. It describes an assembly system comprising a fixture to hold the components, a fastening tool, at least one sensor to detect the tool's position, and an electronic controller (RE47,232 Patent, Abstract). The controller contains a memory with pre-programmed data for the required fastening sequence and executes a program to monitor the tool's position and enable/disable it to enforce that sequence (RE47,232 Patent, col. 17:1-18:65).
- Technical Importance: The system provides the tangible apparatus for implementing the "fool-proof" assembly process, moving beyond a method to claim the integrated set of hardware and software that achieves the error-proofing (RE47,232 Patent, col. 2:55-58).
Key Claims at a Glance
- The complaint asserts at least independent claim 26 (Compl. ¶59).
- The essential elements of independent claim 26 include:
- First and second physically separate components structurally designed for a specific fastening sequence.
- A fixture to hold the components.
- A fastening tool with multiple positions relative to the fixture.
- At least one sensor providing an output indicating the tool's location.
- An electronic controller with memory storing location and sequence data.
- A fastening monitor on the tool.
- A predetermined sequence program in the controller that monitors and compares the tool's position to enforce the sequence and also checks applied torque against stored values.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are "Defendants' Assembly Operations" (accused of infringing the '220 method patent) and "Defendants' Assembly Systems" (accused of infringing the '232 system patent) (Compl. ¶¶ 32, 59). These are used in BMW's U.S. and overseas facilities to manufacture automobiles and their components, such as transmissions, suspensions, seats, and engines (Compl. ¶¶ 34-35, 60).
Functionality and Market Context
- The complaint alleges that BMW's manufacturing operations "error-proof the fastening process" to ensure parts are installed with the correct specifications, identifying threaded fasteners as "particularly critical" (Compl. ¶¶ 36, 61).
- The functionality is described through BMW's alleged use of tooling from suppliers, specifically "computer-controlled DC electric tools from Atlas Copco" (Compl. ¶¶ 38, 63). The complaint alleges these systems use a torque arm to control both fastening sequence and torque (Compl. ¶40). A user interface allegedly provides visual feedback to the operator, guaranteeing "the correct sequence and position" by showing whether the tool is in the right position and whether the operation was successful (Compl. ¶49).
- A screenshot from an Atlas Copco user guide is provided to allege that the system can handle jobs with different bolts requiring different torque values, which are programmed into the system (Compl. ¶51).
IV. Analysis of Infringement Allegations
RE47,220 Infringement Allegations
| Claim Element (from Independent Claim 31) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| providing at least first and second physically separate components that... are 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... | Defendants' articles of assembly (e.g., seat components) are structurally designed such that a specific fastening sequence must be followed to reduce the risk of structural failure, such as from uneven preloads on joint surfaces. | ¶¶41, 44 | col. 13:19-35 |
| providing an electronic controller having stored in a memory thereof... data representative of the location of the first fastening location... and second fastening location... form a predetermined fastening sequence... | Defendants provide an electronic controller with stored data (e.g., x, y, z coordinates) for each fastening location and data indicating a predetermined fastening sequence. | ¶47 | col. 13:40-52 |
| sensing the position of the fastening tool; | Defendants' systems provide sensors that sense the position of the fastening tool, for example, on the end of a reaction arm, and generate signals for the control system. | ¶48 | col. 5:10-20 |
| 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... | The accused assembly operations electronically compare the tool's sensed position with the stored location data and consult the stored order data to enforce the sequence. An operator receives visual feedback on a display. | ¶49 | col. 13:62-65 |
| enabling the fastening tool, when it is positioned in operative relation to the first fastening location, to insert a fastener... only if the operator has not inserted a fastener in the second... | The system enables the tool only when it is at the correct location in the correct sequence (e.g., at location 1 if no fastener is in location 2). A blue display allegedly indicates the tool is in the right position. | ¶49 | col. 14:8-12 |
| measuring torque applied to fastener... and then comparing the measured torque to the first predetermined torque value... | The controller has stored torque values and the assembly operations measure the torque applied by the tool and compare it to the required value on a fastener-by-fastener basis. | ¶¶51-52 | col. 14:35-43 |
| requiring that the torque applied to the fastener located in the first fastening location equal the first predetermined torque value before the operator is allowed to insert a fastener in the second fastening location... | The system requires the correct torque to be applied at the first location before allowing the operator to proceed to the second location. A solid green display allegedly indicates the job is "done with the right torque and the correct sequence." | ¶52 | col. 14:44-53 |
RE47,232 Infringement Allegations
| Claim Element (from Independent Claim 26) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| first and second physically separate components that... are structurally designed so that... a fastener must be inserted in the first fastening location before... the second... to reduce the risk of structural failure... | Defendants provide components for assembly (e.g., seat parts) that are designed to be assembled in a specific sequence to prevent structural failure from improper tightening. | ¶¶66, 69 | col. 16:47-65 |
| a fixture holding the first and second components... in a predetermined position... | The assembly systems include a fixture that holds the components together in a predetermined position to form a single process site. | ¶70 | col. 17:1-3 |
| a fastening tool adapted to fasten fasteners into the single process site... | The systems include a fastening tool, such as a torque arm, to fasten fasteners at the specified locations. | ¶71 | col. 17:4-10 |
| at least one sensor providing a sensor output indicating when the fastening tool is at the first and second fastening locations; | The systems include at least one sensor that generates signals allowing a control system to compute the position of the operating end of the fastening tool. | ¶72 | col. 17:11-13 |
| an electronic controller in communication with the at least one sensor... having stored in a memory thereof... data representative of the location... and... order data... | The system's electronic controller stores location data and sequence data for the fastening locations before the operation commences. | ¶73 | col. 17:14-34 |
| wherein the electronic controller has a predetermined sequence program that... requires the operator's use of the fastening tool to conform to the predetermined sequence... by... monitoring the sequence... and electronically comparing the sensed position... | The controller executes a program that monitors the tool position via sensor output and compares it to stored data to enforce the fastening sequence. A visual display provides feedback. | ¶75 | col. 17:45-58 |
| wherein the execution of the predetermined sequence program... uses the fastening monitor to measure torque applied... and then compares the measured torque to the first predetermined torque value... | The controller program uses the fastening monitor to measure and compare the applied torque at each location to a stored predetermined value for that location. A "Job example" from an Atlas Copco manual shows programmed jobs with different torque values. | ¶¶77-78 | col. 18:24-33 |
- Identified Points of Contention:
- Evidentiary Basis: The infringement allegations rely heavily on marketing materials, user guides, and videos for third-party (Atlas Copco) tooling (Compl. ¶¶38-40, 51, 63-65). A central question will be whether Plaintiff can produce evidence that BMW's actual, in-use assembly systems perform in the specific manner described in these materials and meet every claim limitation.
- Scope Questions: The interpretation of "structurally designed" to require a specific sequence "to reduce the risk of structural failure" will be a key point. The dispute may center on whether this requires a physical interlock that makes out-of-sequence assembly impossible, or whether it is met by a design where an incorrect sequence merely increases the engineering risk of a faulty joint, as the complaint alleges (Compl. ¶44).
- Functional Questions: The complaint alleges the accused system provides feedback and enables/disables the tool based on both sequence and torque (Compl. ¶¶49-50, 52). Evidence will be required to show that the accused system's logic performs these specific conditional steps, rather than simply alerting an operator to an error after the fact. The complaint's screenshot of a red display alerting that the tool is "out of position" could be interpreted as a simple proximity alert rather than the claimed sequence-enforcement logic (Compl. ¶20).
V. Key Claim Terms for Construction
- The Term: "structurally designed so that the first and second fastening locations are positioned... such 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" (from '220 claim 31 and '232 claim 26).
- Context and Importance: This limitation is central to defining the type of assembly problem the invention solves. Its construction will determine whether the patents cover any multi-fastener assembly where a specific sequence is merely advisable for optimal results, or only those where a physical design element mandates the sequence. Practitioners may focus on this term because the plaintiff's infringement theory rests on a broad "risk reduction" interpretation rather than a narrow "physical prevention" one.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent background discusses how improper fastening makes an assembled seat "more prone to possible failure," suggesting a focus on risk mitigation rather than absolute prevention (RE47,220 Patent, col. 1:39-41). The complaint’s argument focuses on how out-of-sequence tightening affects "preloads," which is an engineering risk factor (Compl. ¶44).
- Evidence for a Narrower Interpretation: The patent repeatedly emphasizes a "fool-proof" system, which a defendant could argue implies a system that physically prevents or makes errors impossible, not just one that warns of them (RE47,220 Patent, col. 2:56). The abstract's goal of creating a "more reliable and fool-proof method" could be cited to support a narrower reading that requires more than just a recommended sequence.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement on the basis that Defendants instruct suppliers to practice the invention and by providing an "error-proof the fastening process" (Compl. ¶¶ 54, 80).
- Willful Infringement: Willfulness is alleged based on knowledge of the patents "since at least service of this Complaint" (Compl. ¶¶ 54, 80). The complaint further alleges that given the IPR and reissue history, Defendants have no good faith basis to believe the patents are invalid (Compl. ¶¶ 55, 81). This procedural history may complicate a defendant's ability to argue it had a good-faith belief of invalidity.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of evidentiary proof: Can Plaintiff transition from its reliance on third-party marketing materials to concrete evidence demonstrating that BMW's specific, internal "Assembly Systems" practice every step of the claimed methods and contain every element of the claimed systems?
- A second key issue will be one of claim construction: Will the "structurally designed" limitation be interpreted broadly as a design principle to mitigate engineering risks (e.g., uneven preloads), as Plaintiff alleges, or narrowly as a physical constraint that mistake-proofs the operation, which could present a higher bar for proving infringement?
- Finally, a significant question relates to validity and willfulness: Given that the asserted reissue patents successfully passed through PTAB review over the same art that invalidated their predecessors, how will this extensive prosecution history influence Defendants' invalidity defenses and potential exposure to claims of willful infringement?