Wildcat Licensing Wi LLC v. Ford Motor Co

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Wildcat Licensing WI LLC (Wisconsin)
  • Defendant: Ford Motor Company (Delaware)
  • Plaintiff’s Counsel: Bayard, P.A.; Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
• Case Identification: 1:19-cv-00842, D. Del., 05/06/2019
• Venue Allegations: Venue is alleged to be proper in the District of Delaware because Defendant Ford Motor Company is a Delaware corporation.
• Core Dispute: Plaintiff alleges that Defendant’s vehicle assembly processes and systems, which utilize "error-proofing" techniques to ensure correct fastener torque and sequence, infringe two reissue patents directed to monitoring and controlling such manufacturing operations.
• Technical Context: The technology relates to error-proofing systems in high-volume manufacturing, particularly in the automotive industry, which are designed to eliminate operator mistakes in applying multiple fasteners to a component.
• Key Procedural History: The complaint notes that the two patents-in-suit are narrowing reissues of earlier patents. Claims of those original patents were challenged and found invalid in inter partes review (IPR) proceedings. The patent owner subsequently filed for reissue, amending the claims to be narrower and distinguish over the prior art from the IPRs, which resulted in the issuance of the patents now being asserted.

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"

• Patent Identification: 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, such as for automotive seats, existing systems for fastening components could be easily "tricked" or were prone to operator error (Compl. ¶4; ’220 Patent, col. 2:13-25). An operator might accidentally apply torque to the same screw twice, forget a screw, or even intentionally cheat the system, resulting in an improperly assembled product that could pose a safety risk (’220 Patent, col. 2:15-35).
• The Patented Solution: The patent discloses a "fool-proof" method to ensure fasteners are not only applied with the correct torque but also in a mandatory sequence. The method relies on components that are "structurally designed" to require a specific assembly sequence (’220 Patent, col. 13:20-29). An electronic controller stores the predetermined location and sequence data for each fastener. By sensing the position of the operator's tool, the system enables the tool only when it is at the correct location for the current step in the sequence and disables it otherwise, thereby enforcing the correct order of operations (’220 Patent, Abstract; col. 13:62-14:20).
• Technical Importance: The invention aims to provide a more reliable method for critical fastening operations, thereby improving quality control, enhancing safety, and reducing the risk of costly errors and recalls in mass manufacturing environments (’220 Patent, col. 2:56-59).

Key Claims at a Glance

• The complaint asserts independent claim 31 (Compl. ¶33).
• Essential elements of claim 31 include:
  • Providing physically separate components that are structurally designed so a fastener must be inserted in a first location before a second location to reduce the risk of structural failure.
  • Holding the components in a predetermined position.
  • Manually fastening the components with a tool.
  • Providing an electronic controller with pre-stored data representing the location and required order for the fastening locations.
  • Sensing the position of the fastening tool.
  • Electronically comparing the sensed position to the stored data to ensure the operator follows the predetermined sequence by enabling the tool only when it is at the correct location for a given step.
  • Measuring the torque applied to each fastener and requiring it to equal a predetermined value before the operator is allowed to proceed to the next step in the sequence.
• The complaint reserves the right to assert other claims (Compl. ¶59).

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U.S. Reissue Patent No. RE47,232 - "Assembly System for Monitoring Proper Fastening of an Article of Assembly at More Than One Location"

• Patent Identification: 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 patent addresses the same problem as the ’220 Patent: the need to prevent both accidental and intentional operator errors in assembly processes that require specific fastener sequences and torques (’232 Patent, col. 2:12-35).
• The Patented Solution: This patent claims the system that carries out the method described in the ’220 Patent. The claimed system comprises the physical components designed for sequential assembly, a fixture to hold them, a fastening tool with a monitor, at least one sensor to track the tool's position, and an electronic controller (’232 Patent, Abstract; col. 16:26-18:27). The controller contains a stored program with the required sequence and torque data, and it executes this program to monitor the tool's position and torque application, enabling and disabling the tool to enforce compliance with the pre-set rules (’232 Patent, col. 17:45-18:27).
• Technical Importance: The invention provides the physical apparatus for implementing a "fool-proof" assembly process, ensuring that critical components are assembled correctly, which is vital for product quality and safety in industries like automotive manufacturing (’232 Patent, col. 2:55-58).

Key Claims at a Glance

• The complaint asserts independent claim 26 (Compl. ¶65).
• Essential elements of claim 26 include:
  • First and second physically separate components that are structurally designed to require a specific fastening sequence.
  • A fixture to hold the components.
  • A fastening tool.
  • At least one sensor that provides a sensor output indicating the tool's position.
  • An electronic controller with a memory storing data for the location and order of fastening.
  • The controller executes a program that monitors the sequence of fastening based on the sensor output, compares the tool's position to the stored data, and enables the tool only when it conforms to the predetermined sequence.
  • The system also includes a fastening monitor to measure torque and requires the applied torque to match predetermined values as a condition for proceeding through the sequence.
• The complaint reserves the right to assert other claims (Compl. ¶92).

III. The Accused Instrumentality

Product Identification

• The accused instrumentalities are "Defendant's Assembly Operations" and "Defendant's Assembly Systems," which are methods and systems used by Ford to manufacture automobiles and their components in various U.S. and overseas facilities (Compl. ¶¶ 27, 31, 33, 65).

Functionality and Market Context

• The complaint alleges that Ford's assembly operations perform "error free fastening or error-proofing automated assembly" for components such as transmissions, suspensions, seats, and engines (Compl. ¶¶ 34, 66). These systems are alleged to set requirements for both the sequence and the torque of fasteners to reduce the risk of structural failure (Compl. ¶31).
• The complaint alleges that Ford's own documentation requires the use of "error and/or mistake proofing techniques integrated into the organization's manufacturing and material handling processes" for parts with critical characteristics (Compl. ¶¶ 35, 67). A screenshot from a "Ford Motor Company Customer-Specific Requirements" document is provided to support this allegation (Compl. p. 11, ¶35).
• The functionality is allegedly provided using tooling from third-party suppliers, including Atlas Copco, Mountz, Advanced Manipulator, and ESTIC, all of whom are identified as Ford suppliers or clients (Compl. ¶¶ 37-46, 69-78).

IV. Analysis of Infringement Allegations

RE47,220 Infringement Allegations

RE47,232 Infringement Allegations

• Identified Points of Contention:
  • Scope Questions: A central dispute may concern the scope of the term "structurally designed." The question is whether this limitation requires a unique physical design where out-of-sequence fastening is impossible or causes certain failure, or if it is met by any multi-fastener joint where a specific sequence is recommended to ensure optimal performance (e.g., even preload).
  • Technical Questions: The complaint relies heavily on marketing materials and user manuals from third-party tooling suppliers (e.g., Atlas Copco) to describe the functionality of Ford's systems. A key factual question will be whether Ford's actual, in-factory implementation of these tools uses the specific sequence- and torque-gating logic as claimed, or if Ford uses them in a different, non-infringing manner.

V. Key Claim Terms for Construction

• The Term: "structurally designed"

• Context and Importance: This term appears in the preamble of the independent claims of both patents and is critical for defining the scope of the invention. Its construction will determine what kind of components fall within the claims. Practitioners may focus on this term because the reissue proceedings, which narrowed the original patents, likely centered on adding or emphasizing limitations like this one to overcome prior art. The breadth of this term could be case-dispositive.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The claims state the design is one that "reduce[s] the risk of structural failure," not one that completely prevents it or makes out-of-sequence assembly impossible (e.g., ’220 Patent, col. 13:25-26). This language suggests that any design where a sequence is technically preferable for structural integrity could be covered.
  • Evidence for a Narrower Interpretation: The patent's background describes the invention as a "fool-proof" system to prevent errors (’220 Patent, col. 2:57). A defendant could argue this implies a higher standard, requiring a design where the structural mandate for a sequence is explicit and non-optional, rather than merely a best practice for managing preload.

• The Term: "single process site"

• Context and Importance: This term defines the physical space in which the claimed method and system operate. The definition is important for determining whether a series of fastening operations on a large or complex component constitutes one infringing act or multiple, separate processes.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The patent specification describes an "assembly station" where a seat is worked on as an example of the inventive environment (e.g., ’220 Patent, FIG. 1). This could be interpreted to mean that all fastening operations on a given part-assembly at one station in the assembly line fall within a "single process site."
  • Evidence for a Narrower Interpretation: The patent's flowcharts distinguish between different fixtures (e.g., "Fixture A" and "Fixture B"), suggesting that a "process site" is tied to a specific fixture and the components held within it (’220 Patent, FIG. 4). A defendant might argue this limits the term to a single, discrete set of components being joined at one time.

VI. Other Allegations

• Indirect Infringement: The complaint alleges active inducement of infringement under 35 U.S.C. § 271(b). The basis for this allegation is that Ford instructs its suppliers to practice the claimed invention, citing a "Ford Motor Company Customer-Specific Requirements" document that allegedly mandates the use of "error and/or mistake proofing techniques" (Compl. ¶¶ 60, 93).
• Willful Infringement: The complaint alleges willful infringement based on both pre-suit and post-suit knowledge. Pre-suit knowledge is alleged to date back to at least June 23, 2006, when a predecessor patent was cited in a patent application owned by Navistar, a company with which Ford allegedly had a joint venture (Compl. ¶¶ 60, 93). The complaint also asserts that Ford has no good faith basis to believe it does not infringe or that the patents are invalid, particularly given that they survived reissue proceedings that considered the same prior art that invalidated the original patents (Compl. ¶¶ 61, 94).

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

• A core issue will be one of definitional scope: can the term "structurally designed," which was likely a key addition during the reissue process, be construed broadly to cover any component where a fastening sequence is an engineering best practice, or does it require a narrower interpretation limited to designs where a specific sequence is physically mandated to avoid immediate failure?
• A key evidentiary question will be one of operational reality: does the evidence obtained from Ford's manufacturing facilities demonstrate that its assembly systems actually perform the precise, multi-step method of sequence- and torque-gating as claimed, or will the facts show a material difference between the capabilities described in supplier marketing materials and Ford's day-to-day operations?
• A final question relates to invalidity defense: given that the asserted patents are narrowing reissues of patents whose original claims were invalidated in IPRs, the court will have to consider what arguments, if any, Ford can raise against the validity of the newly amended claims, which were allowed by the USPTO over the very same prior art.