DCT

1:19-cv-00843

Wildcat Licensing Wi LLC v. General Motors LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:19-cv-00843, D. Del., 05/06/2019
  • Venue Allegations: Venue is alleged to be proper in the District of Delaware based on Defendant's incorporation in Delaware and its business activities within the district, including offering for sale and selling products manufactured by the allegedly infringing methods.
  • Core Dispute: Plaintiff alleges that Defendant’s vehicle manufacturing assembly operations and systems infringe two reissue patents related to error-proofing fastener installation by electronically monitoring and controlling both the torque and sequence of fastening.
  • Technical Context: The technology addresses the prevention of human error in high-volume, manual assembly lines, a critical function for ensuring structural integrity, safety, and quality control in industries like automotive manufacturing.
  • 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). The complaint states that claims of these original patents were found invalid by the Patent Trial and Appeal Board (PTAB) in inter partes review (IPR) proceedings. The patent owner then pursued reissue applications to amend the claims, purportedly to distinguish them from the prior art at issue in the IPRs. The complaint notes that the reissued patents were granted after the PTAB reversed an examiner's rejections, suggesting the amendments were considered sufficient to overcome the prior art that invalidated the original claims.

Case Timeline

Date Event
2001-11-19 Earliest 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 assembly, workers may fasten multiple screws at a single station. The patent’s background explains that existing systems, which often just count the number of times a correct torque is applied, could be easily "tricked" or subject to human error (Compl. ¶4). An operator could accidentally or intentionally drive the same screw twice, or fasten screws in the wrong order, resulting in an improperly assembled product that the system would nevertheless approve (’220 Patent, col. 2:14-34).
  • The Patented Solution: The invention is a method for "fool-proof" assembly that ensures both correct torque and correct sequence. It involves using a controller that stores the required location and sequence for each fastener before the operation begins. The system then senses the real-time position of the fastening tool, compares it to the stored sequence, and enables the tool to apply torque only if it is at the correct location at the correct time (’220 Patent, Abstract; col. 13:5-65). This prevents out-of-sequence or redundant fastening operations.
  • Technical Importance: This method provides a more reliable way to conduct critical fastening operations in a mass-assembly environment, aiming to eliminate a class of operator errors that could lead to structural failures and costly recalls (Compl. ¶5).

Key Claims at a Glance

  • The complaint asserts independent claim 31 (Compl. ¶32).
  • Essential Elements of Claim 31:
    • 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.
    • Manually fastening with a tool.
    • Providing an electronic controller with pre-stored "location data" and "order data" forming a "predetermined fastening sequence."
    • Sensing the position of the tool.
    • Electronically comparing the sensed position to the stored data to ensure the operator conforms to the sequence, including by enabling the tool only at the correct location in the sequence.
    • Providing a "sequence output" indicating if the sequence was achieved.
    • Measuring torque and requiring it to match pre-stored torque values as part of the sequence.
  • The complaint does not explicitly reserve the right to assert dependent claims but seeks relief for infringement of one or more claims (Compl. p. 49, Prayer for Relief ¶A).

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 technical problem is identical to that described in the ’220 Patent: the unreliability of assembly systems that cannot enforce a specific fastening sequence in addition to torque requirements (’232 Patent, col. 2:11-35).
  • The Patented Solution: This patent claims the physical system that carries out the method of the ’220 Patent. The invention comprises the combination of physical components: a fixture to hold the article, a fastening tool, at least one sensor to track the tool's position, and an electronic controller. The controller contains a "predetermined sequence program" that executes the logic of monitoring the tool's position and torque to enforce the required fastening sequence (’232 Patent, Abstract; col. 17:45-50).
  • Technical Importance: It provides the apparatus for implementing the error-proofing process, moving beyond a conceptual method to a tangible set of integrated components for use on an assembly line (Compl. ¶5).

Key Claims at a Glance

  • The complaint asserts independent claim 26 (Compl. ¶60).
  • Essential Elements of Claim 26:
    • First and second physically separate components 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 pre-stored location and order data.
    • A "fastening monitor" on the tool for indicating a fastening operation.
    • A "predetermined sequence program" in the controller that, when executed, requires the operator to conform to the sequence by monitoring sensor output, comparing position to stored data, and enabling/disabling the tool accordingly.
  • The complaint seeks relief for infringement of one or more claims of the ’232 Patent (Compl. p. 49, Prayer for Relief ¶A).

III. The Accused Instrumentality

Product Identification

  • Defendant's "Assembly Operations" and "Assembly Systems" used to manufacture automobiles and their components at various facilities in the United States and overseas for importation (Compl. ¶10, ¶26, ¶32, ¶60).

Functionality and Market Context

  • The complaint alleges that General Motors utilizes "Error Proofing" technology to assemble components such as transmissions, suspensions, seats, and chassis (Compl. ¶33, ¶61). This technology is allegedly sourced from third-party suppliers, including Atlas Copco and Mountz (Compl. ¶36, ¶39).
  • The accused functionality involves using tooling, such as position-controlled torque arms, in combination with an electronic controller. This system is alleged to ensure that an operator follows a specific, predetermined sequence for fastening bolts and applies the correct torque at each step (Compl. ¶38, ¶40). The complaint cites a General Motors "Global Supplier Quality" document that explicitly requires suppliers to have a "process for error proof verification" (Compl. ¶34). This document, which includes a screenshot of the requirement, is presented as evidence that Defendant mandates the use of the accused technology (Compl. p. 11).
  • The complaint asserts that these error-proofing systems are critical for preventing operator error, ensuring vehicle safety, and avoiding costly recalls (Compl. ¶33, ¶61).

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, when assembled together, form at least a portion of the article of assembly... wherein the article of assembly is 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... Defendant provides separate automotive components (e.g., seat back, seat track) for assembly, which are structurally designed to require a specific fastening sequence to prevent structural failure. ¶42, ¶45 col. 13:6-29
manually fastening fasteners into the first and second fastening locations of the article of assembly using a fastening tool; An operator for Defendant's Assembly Operations manually fastens components using a fastening tool, such as a torque arm from suppliers like Atlas Copco or Mountz. ¶47 col. 13:35-38
providing an electronic controller having stored in a memory thereof... data representative of the location of the first... and second fastening location... together with... order data... wherein the location data and the... order data... form a predetermined fastening sequence... Defendant's systems allegedly use 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 sequence that must be followed. ¶48 col. 13:39-61
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... at the first fastening location... only if the operator has not inserted a fastener in the second... and (b) enabling the fastening tool... at the second fastening location, only if the operator already has inserted a fastener in the first... Defendant's systems allegedly compare the tool's sensed position to the stored data and enable or disable the tool to enforce the sequence. A screenshot of an Atlas Copco display shows a blue background to indicate the tool is in the "right position" and enabled, and a red display to alert when the tool is "out of position." ¶50, ¶21-23 col. 14:1-17
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 provides output indicating sequence conformance. The complaint cites an Atlas Copco system where a "solid green display says the job is done with the right torque and the correct sequence." ¶51, ¶22 col. 14:21-26
when the operator's use of the fastening tool conforms to the predetermined sequence of fastening, (a) measuring torque... and then comparing the measured torque to the first predetermined torque value, (b) requiring that the torque applied... equal the first predetermined torque value before the operator is allowed to insert a fastener in the second... When the sequence is followed, Defendant's systems allegedly measure the applied torque for each fastener and require it to meet the predetermined value before allowing the operator to proceed to the next fastener in the sequence. ¶53 col. 14:31-48
  • Identified Points of Contention:
    • Technical Question: The complaint relies heavily on marketing materials from third-party tool suppliers (e.g., Atlas Copco). A central question will be whether the specific logic implemented in GM's assembly systems—as they actually operate—matches the very precise, conditional logic of claim 31 (e.g., "enable... only if the operator has not inserted a fastener in the second location").
    • Scope Question: The claim requires that the components be "structurally designed" to necessitate a specific sequence. The defense may challenge whether every assembly process accused of infringement involves components where the sequence is a structural necessity, as opposed to a preferred or recommended practice.

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 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... Defendant's automobiles are assembled from separate components that are allegedly designed such that a specific fastening sequence is required to reduce the risk of structural failure. ¶70, ¶73 col. 16:53-65
a fixture holding the first and second components of the article of assembly in a predetermined position... Defendant's assembly systems include a fixture that holds components in a set position for assembly. ¶74 col. 16:66-68
at least one sensor providing a sensor output indicating when the fastening tool is at the first and second fastening locations; The accused systems, such as those from Atlas Copco and Mountz, allegedly include sensors on a torque arm that generate signals to compute the position of the fastening tool. ¶76 col. 17:11-14
an electronic controller... having stored in a memory thereof... data representative of the location of the first... and second fastening location... together with... order data... form[ing] a predetermined fastening sequence... The accused assembly systems include an electronic controller that allegedly stores location and sequence data for the fastening operations before the operator begins. ¶77 col. 17:15-34
wherein the electronic controller has a predetermined sequence program that, when executed, requires the operator's use of the fastening tool to conform to the predetermined sequence of fastening... by... (a) monitoring the sequence... (b) electronically comparing the sensed position... and then (c) using the order data... to (i) enable the fastening tool... and (ii) enable the fastening tool... The controller in the accused systems allegedly contains a program that executes the logic of monitoring the tool's position via sensor output, comparing it to stored data, and enabling the tool only when it is in the correct position for the current step in the sequence, thereby enforcing the predetermined sequence. ¶79 col. 17:45-68
  • Identified Points of Contention:
    • Technical Question: Does the software in the controllers used by GM contain a "predetermined sequence program" that executes the specific three-part logic (monitoring, comparing, using order data to enable/disable) as claimed? The defense may argue that while their systems guide operators, they do not execute the exact command-and-control logic recited in the claim.
    • Scope Question: The meaning of "fastening monitor indicating a fastening operation" could be disputed. While the complaint equates this with torque measurement (Compl. ¶78), the defense could argue it requires a different or more specific function, potentially creating a non-infringement argument.

V. Key Claim Terms for Construction

  • The Term: "predetermined fastening sequence" (appearing in '220 claim 31 and '232 claim 26)

    • Context and Importance: This term is the technological core of both asserted claims. Its construction will determine how rigidly the accused systems must enforce an ordered series of operations to infringe. Practitioners may focus on this term because the reissue proceedings likely turned on adding specificity to how the sequence is defined and enforced, making its scope critical for both validity and infringement.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The patent background describes the sequence as "critical" for certain industries, and the claims tie it to reducing "risk of structural failure," suggesting the term is defined by its functional purpose rather than a specific implementation ('220 Patent, col. 1:39; col. 13:25-27).
      • Evidence for a Narrower Interpretation: The detailed description and flowcharts (e.g., ’220 Patent, FIG. 4) illustrate a specific, linear, step-by-step logic. A defendant may argue that "predetermined fastening sequence" is limited by these embodiments to a fixed, unchangeable order of operations that the controller strictly enforces.

  • The Term: "predetermined sequence program" ('232 claim 26)

    • Context and Importance: This limitation defines the software element of the accused system. The infringement analysis will depend on whether the software in GM's controllers performs the exact functions defined by the claim's "when executed" clause.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The patent does not disclose specific source code, which may support an interpretation that any program achieving the functional result of monitoring, comparing, and enabling/disabling falls within the term's scope.
      • Evidence for a Narrower Interpretation: The claim recites a detailed, multi-step process that the program must execute. A defendant could argue that this term requires a single, integrated software module that performs all the recited functions (monitoring, comparing, enabling/disabling) in the specified manner, and that a system using separate programs or different logic would not meet this limitation.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges that Defendant actively induces infringement by "instructing suppliers to practice the claimed invention" (Compl. ¶55, ¶84). This is supported by allegations that Defendant's "Global Supplier Quality" standards require its suppliers to implement "Error Proofing" and have a "process for error proof verification," directly tying Defendant's policies to the use of the accused technology (Compl. ¶34, ¶55).
  • Willful Infringement: Willfulness is alleged based on both pre- and post-suit knowledge. The complaint alleges pre-suit knowledge by pointing to Defendant's own U.S. patent applications (from 2009 and 2011) that cited the predecessor patents to the patents-in-suit, suggesting Defendant's R&D was aware of the patented technology family long before the lawsuit (Compl. ¶55, ¶84). Post-suit knowledge is based on the filing of the complaint itself (Compl. ¶55, ¶84).

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

  • A key evidentiary question will be one of technical implementation: Do the third-party assembly systems used by General Motors, as they actually operate on the factory floor, execute the specific, multi-step logical sequence recited in the reissued claims—particularly the precise conditional enabling and disabling of the fastening tool—or is there a material difference between the systems' real-world functionality and the patent's narrow requirements?
  • A central legal and factual issue will be one of claim scope versus prior art: The patents-in-suit are narrowing reissues prosecuted to overcome invalidity findings against the parent patents. The case will likely turn on whether the newly added, more specific limitations are distinct enough to be valid over the prior art from the earlier IPRs, and, if so, whether General Motors' assembly systems are still encompassed by that narrowed claim scope.
  • A third critical question will relate to inducement and knowledge: Can Plaintiff prove that General Motors' general quality requirements for "error proofing" constitute specific intent to induce infringement of the particular methods and systems claimed in the patents, and does GM's citation to the parent patents in its own R&D establish pre-suit knowledge of the specific patented technology, thereby supporting the claim for willfulness?