DCT
1:19-cv-00839
Wildcat Licensing Wi LLC v. Faurecia SA
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Wildcat Licensing WI LLC (Wisconsin)
- Defendant: Faurecia S.A. (France) and its U.S. subsidiaries
- Plaintiff’s Counsel: Mintz Levin Cohn Ferris Glovsky and Popeo, P.C.
- Case Identification: 1:19-cv-00839, D. Del., 05/06/2019
- Venue Allegations: Venue is alleged to be proper in the District of Delaware because Defendant entities are incorporated in Delaware and have offered to sell or sold infringing products within the district.
- Core Dispute: Plaintiff alleges that Defendant’s automotive component assembly operations and systems infringe patents directed to error-proofing technology that ensures fasteners are applied in the correct sequence and with the correct torque.
- Technical Context: The technology addresses a need in high-volume manufacturing, particularly in the automotive sector, for reliable systems that prevent operator errors during critical fastening procedures, thereby enhancing assembly quality and safety.
- Key Procedural History: The patents-in-suit are narrowing reissues of two earlier patents. Portions of the original patents were found invalid in prior inter partes review (IPR) proceedings. The patent owner subsequently filed reissue applications with amended claims, which were allowed by the Patent Trial and Appeal Board (PTAB) and issued as the patents now asserted. This history may inform claim construction and arguments related to prosecution history estoppel.
Case Timeline
| Date | Event |
|---|---|
| 2001-11-19 | Priority Date for ’220 and ’232 Patents |
| 2008-XX-XX | Original inventor's company (LMS-Walt) ceased operations |
| 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 - "Method for Monitoring Proper Fastening of an Article of Assembly at More Than One Location"
The Invention Explained
- Problem Addressed: The patent identifies a problem in mass-assembly environments where existing quality control systems could be "tricked or subject to failure" (’220 Patent, col. 2:15-16). For example, a worker could fasten the same screw twice or intentionally bypass the system, resulting in improperly fastened components despite the system registering the correct total number of fastening operations (Compl. ¶¶3-4; ’220 Patent, col. 2:16-35).
- The Patented Solution: The invention is a method for "fool-proof" assembly that monitors both the sequence and torque of fastening operations. The method uses an electronic controller that stores the required location and order for each fastener. It then senses the position of a manual fastening tool and enables the tool to function only when it is at the correct location in the correct sequence. The system also measures the applied torque at each step and requires it to match a predetermined value before the operator can proceed to the next fastener, as illustrated in the control logic of Figure 4 (’220 Patent, Abstract; col. 6:14-col. 8:6).
- Technical Importance: This technology provided a way to "ensure that the fasteners are fastened with the correct torque and in the right sequence," addressing a long-felt need for a more reliable, error-proof method for critical fastening operations in manufacturing (Compl. ¶5).
Key Claims at a Glance
- The complaint asserts independent claim 31 (Compl. ¶37).
- Essential elements of independent claim 31 include:
- Providing components structurally designed such that a specific fastening sequence is required to reduce the risk of structural failure.
- Holding the components in a predetermined position at a single process site.
- Providing an electronic controller with stored location data and order data for a predetermined fastening sequence.
- Sensing the position of a manual fastening tool.
- Electronically comparing the sensed position to the stored data to ensure conformance with the sequence by enabling the tool to insert a fastener only at the correct location and time in the sequence.
- Providing a "sequence output" indicating whether the sequence has been achieved.
- Measuring the torque applied at each location and requiring it to equal a predetermined value before allowing the operator to proceed to the next fastening location.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Reissue Patent No. RE47,232 - "Assembly System for Monitoring Proper Fastening of an Article of Assembly at More Than One Location"
The Invention Explained
- Problem Addressed: Similar to the ’220 Patent, this patent addresses the need to prevent operator error and system bypasses in assembly lines that rely on sequential fastening operations (’232 Patent, col. 2:12-35).
- The Patented Solution: The ’232 Patent claims the physical system that performs the error-proofing function. The system comprises a fixture to hold the components, a fastening tool, at least one sensor to track the tool's position relative to fastening locations, and an electronic controller. The controller stores a "predetermined sequence program" and location data, monitors the tool's position via the sensor, and executes control logic to ensure the operator follows the required sequence and applies the correct torque at each step (’232 Patent, Abstract; col. 16:26-col. 18:50).
- Technical Importance: The invention provides the integrated hardware and software apparatus for implementing a reliable, error-proof assembly process, a critical need for quality control in industries like automotive manufacturing (Compl. ¶6).
Key Claims at a Glance
- The complaint asserts independent claim 26 (Compl. ¶65).
- Essential elements of independent claim 26 include:
- First and second components structurally designed to require a specific fastening sequence.
- A fixture to hold the components.
- A fastening tool.
- At least one sensor providing an output indicating the tool's position.
- An electronic controller with stored location and order data.
- A predetermined sequence program executed by the controller that monitors and enforces the fastening sequence by enabling the tool only when it conforms to the sequence.
- A fastening monitor to measure torque, with the controller requiring both the correct sequence and correct torque before allowing the process to be completed.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
- The complaint accuses "Defendants' Assembly Operations" and "Defendants' Assembly Systems" used to manufacture automotive components, such as seats (Compl. ¶¶35, 38).
Functionality and Market Context
- The complaint alleges that Defendants, as major suppliers to Ford and FCA, utilize "error free fastening or error-proofing automated assembly" processes as required by their customers (Compl. ¶¶38-42). These processes are used to join components like seat backs to seat tracks, where both the fastening sequence and applied torque are critical to "prevent operator error, ensure safety, and prevent liability and costly automobile recalls" (Compl. ¶38). The complaint alleges these systems use tooling from suppliers such as Atlas Copco (Compl. ¶44). The provided image from Ford's "Customer-Specific Requirements" document indicates that for parts with "Critical Characteristics," the supplier "shall prevent the shipment of non-conforming product" by using "error and/or mistake proofing techniques" (Compl. ¶40).
IV. Analysis of Infringement Allegations
RE47,220 Infringement Allegations
| Claim Element (from Independent Claim 31) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method for assembling components... providing at least first and second physically separate components that... when assembled together, form at least a portion of the article of assembly... wherein the article of assembly is structurally designed so that... a fastener must be inserted in the first... before... the second... | Defendant's assembly operations allegedly join physically separate components (e.g., a seat back and seat track) that are structurally designed to require a specific fastening sequence to reduce the risk of structural failure (Compl. ¶¶47, 50). | ¶¶47, 50 | col. 13:5-30 |
| 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... | Defendant allegedly provides an electronic controller that stores location data (e.g., x, y, z coordinates) and order data for each fastening location, which together form a predetermined fastening sequence (Compl. ¶53). | ¶53 | col. 13:38-51 |
| sensing the position of the fastening tool; | Defendant allegedly provides one or more sensors on a reaction arm that generate signals allowing a control system to compute the position of the fastening tool (Compl. ¶54). | ¶54 | col. 13:61-62 |
| electronically comparing the sensed position of the fastening tool with the data... to ensure the operator's use of the fastening tool conforms to the predetermined sequence... by (a) enabling the fastening tool... to insert a fastener in the first fastening location only if the operator has not inserted a fastener in the second... | The system allegedly compares the tool's sensed position with stored data and enables the tool only when it is at the correct location in the sequence. An image from an Atlas Copco video shows a blue display, which allegedly "lets you know the tool is in the right position" (Compl. ¶55). | ¶55 | col. 13:63-col. 14:19 |
| 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, such as a display that turns green for a correct operation or red for an incorrect one, indicating whether the tool is enabled or disabled based on sequence conformance (Compl. ¶56). | ¶56 | col. 14:20-25 |
| when the operator's use of the fastening tool conforms to the predetermined sequence... (a) measuring torque... in the first fastening location... (b) requiring that the torque... equal the first predetermined torque value before the operator is allowed to insert a fastener in the second... and (c) and (d)... | When the sequence is correct, the system allegedly measures the torque applied at each fastener, compares it to a stored predetermined value for that location, and requires the correct torque to be applied before allowing the operator to proceed to the next fastener (Compl. ¶¶57-58). An image from an Atlas Copco user guide shows a "Job example" with different torque values ("Psets") defined for a sequence (Compl. ¶57). | ¶¶57-58 | col. 14:26-62 |
RE47,232 Infringement Allegations
| Claim Element (from Independent Claim 26) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An assembly system for assembling components... comprising: 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... | Defendants' assembly systems allegedly include components (e.g., seat parts) that are structurally designed such that they must be assembled in a specific sequence to reduce the risk of structural failure (Compl. ¶¶75, 78). | ¶¶75, 78 | col. 16:27-58 |
| a fixture holding the first and second components... in a predetermined position...; a fastening tool adapted to fasten fasteners...; | The accused systems allegedly include a fixture that holds the components in a predetermined position and a fastening tool (e.g., a torque arm) to fasten fasteners at multiple locations (Compl. ¶¶79-80). | ¶¶79-80 | col. 16:59-col. 17:11 |
| at least one sensor providing a sensor output indicating when the fastening tool is at the first and second fastening locations; | The systems allegedly include at least one sensor that generates signals to allow a control system to compute the position of the fastening tool as it moves between locations (Compl. ¶81). | ¶81 | col. 17:12-15 |
| an electronic controller... having stored in a memory thereof... data representative of the location of the first... and second fastening location... together with first... and second order data... | The systems allegedly include an electronic controller that stores location and order data for a predetermined fastening sequence before the operator begins work (Compl. ¶82). | ¶82 | col. 17:16-44 |
| 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... electronically comparing the sensed position... and... using the order data to... enable the fastening tool... | The controller allegedly executes a program that monitors and enforces the sequence by comparing the tool's sensed position to stored data and enabling the tool only when it conforms to the sequence. The complaint references visual feedback where a "blue display lets you know the tool is in the right position," a green display indicates success, and a red display indicates an out-of-position error, allegedly showing the tool is enabled or disabled (Compl. ¶¶84, 85). | ¶¶84, 85 | col. 17:47-col. 18:16 |
| wherein the execution of the predetermined sequence program... requires... (a) uses the fastening monitor to measure torque... (b) requires that the torque applied... equal the first predetermined torque value before the operator is allowed to insert a fastener in the second... and (c) and (d)... | The controller's program allegedly requires that the correct predetermined torque value be applied at the first location before the operator can proceed to the second, and so on for all fasteners in the sequence, ensuring both sequence and torque requirements are met (Compl. ¶¶86-87). | ¶¶86-87 | col. 18:23-50 |
- Identified Points of Contention:
- Scope Questions: The complaint's allegations rely heavily on marketing materials and user guides from a third-party tooling supplier, Atlas Copco. A central question for the court will be whether the evidence presented can definitively link the functionality described in these general materials to the specific assembly systems as actually configured and used by Faurecia in its facilities.
- Technical Questions: A key technical question will surround the meaning of "enabling the fastening tool." The complaint alleges the tool is enabled or disabled (Compl. ¶¶55, 84), but the supporting evidence cited consists of screenshots showing visual feedback to an operator (blue, green, or red displays). The court will need to determine whether providing an operator with a go/no-go signal is sufficient to meet this limitation, or if the claim requires a direct electronic lockout that physically prevents the tool from functioning when the sequence is not followed.
V. Key Claim Terms for Construction
The Term: "enabling the fastening tool" (and "disabling the fastening tool")
Context and Importance: This term is central to how the patented invention enforces compliance. Its construction will determine whether a system that merely guides an operator with visual cues infringes, or if infringement requires a system that physically prevents the tool from operating out of sequence. Practitioners may focus on this term because the complaint's evidence (visual displays) may not align with the potentially more restrictive meaning of direct electronic control suggested by the patent specification.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue that in the context of a human-operated system, "enabling" means providing the necessary signal for the operator to proceed correctly. The flow chart in Figure 4 shows "Enable Fastening Tool" (112) as a logical step, which could be interpreted as providing the "all clear" signal to the user.
- Evidence for a Narrower Interpretation: The specification states the electronic controller has a connection to the driver "for activating the driver... and disabling the driver," which suggests direct control over the tool's power or function, not just user guidance (’220 Patent, col. 6:25-29). The claims also require the system to "ensure the operator's use... conforms," which a party could argue implies a mandatory lockout rather than an optional instruction.
The Term: "structurally designed so that the first and second fastening locations are positioned... such that a fastener must be inserted in the first... before... the second... to reduce the risk of structural failure"
Context and Importance: This functional language in both asserted independent claims limits their scope to articles of assembly where the fastening sequence is critical for structural integrity. Infringement will require proof that the specific automotive components assembled by the defendant (e.g., seats) possess this characteristic.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent's background describes how improper fastening on a seat frame can make it "more prone to possible failure" (’220 Patent, col. 2:39-42). A party may argue that any sequence specified for safety or quality control inherently serves to "reduce the risk of structural failure" in a broad sense.
- Evidence for a Narrower Interpretation: A party could argue this requires proof of a specific, quantifiable risk of acute structural collapse or breakage, not merely a deviation from a "best practice" or a risk of long-term wear. The patent contrasts the invention with systems that could be "tricked," leading to "improperly fastened" screws, suggesting the "failure" is a direct result of an incorrect assembly step (’220 Patent, col. 2:20-25).
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendants actively induce infringement under 35 U.S.C. § 271(b), citing instructions given to operators and suppliers to practice the claimed invention (Compl. ¶¶60, 89).
- Willful Infringement: Willfulness is alleged based on Defendants' knowledge of the patents-in-suit and their infringement from "at least service of this Complaint" (Compl. ¶¶60, 89). The complaint does not allege pre-suit knowledge.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of evidentiary linkage: can Plaintiff establish that Defendant's specific, internal manufacturing systems practice every element of the asserted claims, given that the complaint's allegations are primarily substantiated with general marketing materials and manuals from a third-party tool supplier?
- A second key question will be one of functional scope: does the accused system's use of color-coded screen displays to guide an operator meet the claim requirement of "enabling" and "disabling" the fastening tool, or must the system impose a direct, physical lockout on the tool's operation to infringe?
- Finally, the case will present a critical factual test: does the assembly of Defendant's specific automotive components involve a "risk of structural failure" that is mitigated by a required fastening sequence, as functionally required by the claims, and what level of evidence will be necessary to satisfy this predicate limitation?