Wildcat Licensing Wi LLC v. FCA US LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Wildcat Licensing WI LLC (Wisconsin)
  • Defendant: FCA US LLC (Delaware), FCA Italy S.p.A. (Italy), and Fiat Chrysler Automobiles NV. (Netherlands)
  • Plaintiff’s Counsel: Bayard, P.A. (Local); Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. (Of Counsel)
• Case Identification: 1:19-cv-00840, D. Del., 05/06/2019
• Venue Allegations: Venue is alleged based on Defendant FCA US LLC's incorporation in Delaware and Defendants' sales of infringing products within the district.
• Core Dispute: Plaintiff alleges that Defendants’ vehicle assembly systems and methods infringe two reissue patents related to error-proof fastening technology that ensures bolts are applied with the correct torque and in the correct sequence.
• Technical Context: The technology addresses quality control in high-volume manufacturing, particularly in the automotive industry, where ensuring the integrity of critical bolted joints is essential for safety and reliability.
• Key Procedural History: The patents-in-suit are narrowing reissues of two 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. The patent owner then filed for reissue, amending the claims to be narrower. The patents-in-suit subsequently issued after the PTAB reversed an examiner's rejections, allowing the claims over the same prior art that was at issue in the IPRs.

Case Timeline

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: In high-volume assembly lines, existing quality control systems that simply count the number of times a correct torque is applied can be easily "tricked" (’220 Patent, col. 2:13-15). An operator could accidentally or intentionally fasten the same screw twice, or reverse and re-tighten a screw, satisfying the torque count while leaving other fasteners loose or creating an improper assembly (’220 Patent, col. 2:15-35; Compl. ¶4). This created a risk of improperly assembled products, such as automotive seats, leaving the factory (’220 Patent, col. 2:36-42).
• The Patented Solution: The invention describes a method and system to "fool-proof" the assembly process by ensuring not only that the correct torque is applied, but also that it is applied to the correct fastener in a predetermined sequence (’220 Patent, col. 2:56-59). The system uses a fastening tool with a position sensor that detects distinct targets corresponding to each fastening location. An electronic controller stores the required sequence and torque values, and only enables the tool when it is at the correct location in the sequence and the correct torque has been applied to all previous fasteners (’220 Patent, Fig. 4; col. 6:14-24).
• Technical Importance: This approach provides real-time, integrated verification of both fastener location and applied torque, aiming to eliminate a class of operator errors that were difficult to detect with prior art systems focused solely on torque or fastener counts (Compl. ¶5).

Key Claims at a Glance

• The complaint asserts 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 risk of structural failure.
  • Holding the components in a predetermined position to form a single process site.
  • Manually fastening fasteners with a tool.
  • Providing a controller with pre-stored location and order data for a predetermined fastening sequence.
  • Sensing the position of the fastening tool.
  • Electronically comparing the sensed position to the stored data to enforce the sequence by enabling the tool only when it is at the correct location in the sequence.
  • Providing a sequence output.
  • Measuring the torque applied at each location and requiring it to match a predetermined value before allowing the sequence to proceed.
• 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," issued February 12, 2019

The Invention Explained

• Problem Addressed: The problem is identical to that described for the ’220 Patent: the inability of existing assembly systems to prevent operator error in multi-fastener assembly tasks, which could lead to improperly secured components despite meeting simple quality checks like torque counts (’232 Patent, col. 2:12-24).
• The Patented Solution: The ’232 Patent claims the physical system that performs the error-proofing method. The system comprises a fixture to hold the components, a fastening tool, one or more sensors to detect the tool's position relative to fastening locations, and an electronic controller (’232 Patent, col. 16:41-48). The controller contains a program with a predetermined fastening sequence and associated torque values, and it uses input from the sensor(s) and a torque monitor to ensure the operator follows the prescribed sequence and applies the correct torque at each step (’232 Patent, col. 17:44-18:20).
• Technical Importance: By claiming the apparatus itself, the patent covers the tangible "error-proofing" hardware and software combination deployed on an assembly line to prevent sequence and torque errors (Compl. ¶65).

Key Claims at a Glance

• The complaint asserts independent claim 26 (Compl. ¶64).
• The essential elements of independent claim 26 include:
  • First and second physically separate 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 when the tool is at the first and second fastening locations.
  • An electronic controller that stores location and order data, monitors the sequence via the sensor, and enables the tool only when it conforms to the predetermined sequence.
  • A fastening monitor to verify torque, with the controller requiring correct torque application at each step before allowing the sequence to continue.
• 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" and "Defendants' Assembly Systems" used to manufacture automobiles and their components (e.g., transmissions, suspensions, seats) in Fiat Chrysler Automobiles (FCA) facilities (Compl. ¶10, ¶32).

Functionality and Market Context

The complaint alleges that FCA's assembly operations utilize "error-proofing and mistake-proofing" technology to ensure safety and prevent costly recalls (Compl. ¶35, ¶66). This technology is allegedly implemented using tooling from third-party suppliers such as Atlas Copco, Mountz, and ESTIC, which FCA is alleged to use in its assembly plants (Compl. ¶38, ¶41, ¶44). The complaint alleges these systems employ position-controlled torque arms and electronic controllers that guide an operator through a pre-programmed fastening sequence, controlling both the tool's position and the torque applied at each step (Compl. ¶40, ¶42, ¶45). A screenshot from an Atlas Copco promotional video shows a graphical user interface for such a system, which provides visual feedback to the operator on sequence status (Compl. ¶54, p. 23). Defendants are alleged to manufacture and sell approximately 2 million automobiles per year in the United States using these processes (Compl. ¶30).

IV. Analysis of Infringement Allegations

RE47,220 Patent Infringement Allegations

RE47,232 Patent Infringement Allegations

Identified Points of Contention

• Scope Question: A central question may be whether Defendants' components are "structurally designed" such that a specific sequence is mandatory to "reduce the risk of structural failure," as required by both asserted claims. The defense may argue that while a sequence is followed as a matter of best practice for ensuring even preload, it is not a structural necessity dictated by the part design itself, but rather a choice made in the assembly process.
• Technical Question: What level of proof will be required to show that the accused systems "electronically compare" sensed position data with stored location data (e.g., "x, y, z" coordinates, as alleged in Compl. ¶52)? The dispute may focus on whether the accused systems perform a precise coordinate-based comparison or a more general zone-based check, and whether the latter meets the claim limitation as construed.
• Evidentiary Question: The complaint relies heavily on marketing materials and user guides from third-party tool suppliers (Atlas Copco, Mountz, ESTIC). A key point of contention will be whether Plaintiff can demonstrate that Defendants' actual implementation of these tools in their assembly plants uses the specific "error-proofing" features in a manner that maps onto all limitations of the asserted claims.

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" (’220 Patent, cl. 31; ’232 Patent, cl. 26)

  • Context and Importance: This limitation appears to require that the physical geometry of the components, not just the assembly process instructions, dictates a mandatory sequence. The entire infringement theory hinges on this being true for Defendants' components. Practitioners may focus on this term because it links the claimed method/system to a specific physical characteristic of the article being assembled, which could be a difficult element for the Plaintiff to prove across a wide range of automotive components.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification does not appear to provide an explicit definition or example that would broaden this term. A party might argue that any joint where sequence affects preload (as cited in the complaint, e.g., ¶49) inherently has a "structural" reason for a sequence, thus meeting the limitation.
    • Evidence for a Narrower Interpretation: The claim language "must be inserted" and "to reduce the risk of structural failure" suggests a mandatory, non-optional sequence critical to the final part's integrity, not merely a preferred practice. The lack of specific examples in the patent's detailed description of such a "structurally designed" component may lead a court to interpret this limitation narrowly based on its plain and ordinary meaning, which implies a strong causal link between sequence and structural integrity.

• The Term: "single process site" (’220 Patent, cl. 31; ’232 Patent, cl. 26)

  • Context and Importance: This term defines the physical space in which the claimed invention operates. Its construction is important for determining the boundaries of the claimed method/system. Defendants could argue that a modern, complex assembly line consists of multiple process sites, and that the accused operations do not occur within a "single" site as claimed.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification refers to an "assembly station" where work operations are performed, which could be interpreted broadly to cover the entire area where an operator works on a particular set of components, even if it involves multiple distinct actions (’220 Patent, col. 4:5-6).
    • Evidence for a Narrower Interpretation: The claim states the site is formed when the "first and second components are placed together" (’220 Patent, cl. 31), which could be interpreted narrowly to mean only the immediate interface between the two parts being joined, potentially limiting the scope of the claim.

VI. Other Allegations

• Indirect Infringement: The complaint alleges Defendants actively induce infringement under 35 U.S.C. § 271(b) by "instructing suppliers to practice the claimed invention" (Compl. ¶59, ¶90). This allegation is supported by a citation to FCA's "Customer-Specific Requirements" document, which allegedly requires suppliers to conduct "Error Proofing Verification (EPV) audits" on their assembly lines (Compl. ¶36, ¶66).
• Willful Infringement: Willfulness is alleged based on knowledge of the patents and infringement obtained "since at least service of this Complaint" (Compl. ¶59, ¶90). The complaint asserts that from the time of notice, Defendants have had no good faith basis to believe they do not infringe or that the patents are invalid (Compl. ¶60, ¶91).

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

This case presents a focused dispute over sophisticated manufacturing process control technology. The outcome may turn on the resolution of two central questions:

• A key question of claim scope will be whether the limitation requiring components to be "structurally designed" for a specific sequence can be met by showing that a sequence is merely advantageous for managing preload, or if it requires proof of a more critical design constraint where an incorrect sequence leads to direct structural failure. The Plaintiff's ability to prove this specific design characteristic across the Defendants' various automotive assemblies will be critical.
• An evidentiary and technical question will be one of functional mapping: can the general "error-proofing" capabilities described in third-party tooling manuals be definitively mapped onto the specific, multi-step sequence of sensing, comparing, enabling, and torque-checking recited in the asserted claims as they are actually implemented in Defendants' factories? The case will likely require a detailed technical comparison between the patented steps and the precise operations of the accused assembly systems.