DCT
1:19-cv-00844
Wildcat Licensing Wi LLC v. Jaguar Land Rover Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Wildcat Licensing WI LLC (Wisconsin)
- Defendant: Jaguar Land Rover Limited (United Kingdom) and Jaguar Land Rover North America, LLC (Delaware)
- Plaintiff’s Counsel: Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.; Bayard, P.A.
- Case Identification: 1:19-cv-00844, D. Del., 05/06/2019
- Venue Allegations: Venue is alleged to be proper in the District of Delaware because Defendant Jaguar Land Rover North America, LLC is incorporated in Delaware and both defendants have offered to sell and sold products in the district.
- Core Dispute: Plaintiff alleges that Defendants’ overseas vehicle assembly operations, for vehicles imported into the U.S., infringe a patent covering a method for ensuring fasteners are applied with the correct torque and in the correct sequence.
- Technical Context: The lawsuit concerns "error-proofing" technology for high-volume manufacturing, which is critical in industries like automotive assembly for ensuring structural integrity and preventing costly recalls.
- Key Procedural History: The patent-in-suit, RE47,220, is a narrowing reissue of U.S. Patent No. 7,062,831. According to the complaint, claims of the original '831 patent were invalidated in an inter partes review (IPR) proceeding. The patent owner then filed for reissue, amending the claims to distinguish over the prior art from the IPR. The U.S. Patent and Trademark Office subsequently allowed the reissue patent to issue. This prosecution history suggests the scope of the asserted claims has been deliberately narrowed, which will be a central issue for claim construction.
Case Timeline
| Date | Event |
|---|---|
| 2001-11-19 | Priority Date for U.S. Patent No. RE47,220 |
| 2006-06-20 | Issue Date for original U.S. Patent No. 7,062,831 |
| 2017-02-06 | Reissue application for RE47220 filed |
| 2018-08-23 | PTAB reverses examiner's rejections of reissue claims |
| 2019-02-05 | Issue Date for U.S. Reissue Patent No. RE47,220 |
| 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: In high-volume assembly lines, existing systems for fastening components (e.g., with screws or bolts) could be easily "tricked" or were prone to operator error (Compl. ¶4). For example, a worker might accidentally or intentionally apply torque to the same fastener twice to meet a total count, leaving other fasteners loose, or might apply fasteners in the wrong order, compromising the assembly's structural integrity ('220 Patent, col. 2:13-34).
- The Patented Solution: The invention describes a "fool-proof" method that ensures fasteners are applied not only with the correct torque but also in a specific, predetermined sequence ('220 Patent, Abstract). The system uses sensors to track the physical position of a fastening tool, compares that position to stored data defining the required sequence, and controls the tool's operation—for instance, by enabling it only when it is at the correct location in the sequence—while also verifying that the correct torque is applied at each step ('220 Patent, col. 7:1-25).
- Technical Importance: The technology provides a reliable method for error-proofing critical fastening operations in a mass-assembly environment, aiming to eliminate human error and enhance quality control (Compl. ¶5).
Key Claims at a Glance
- The complaint asserts infringement of at least independent claim 31 (Compl. ¶30).
- Essential elements of independent claim 31 include:
- Providing components for an assembly that are structurally designed to require a specific fastening sequence to reduce the risk of structural failure.
- Providing an electronic controller with stored data representing the location of each fastening point and the required sequential order.
- Manually fastening the components using a tool.
- Sensing the tool's position and electronically comparing it to the stored location and sequence data.
- Enabling the tool to fasten at a location only if the operator is following the predetermined sequence.
- Measuring the torque applied at each step and requiring it to meet a predetermined value before the operator can proceed to the next step in the sequence.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
The complaint accuses the "Defendants' Assembly Operations" used to manufacture automobiles and their components overseas for importation into the United States (Compl. ¶30). Specific vehicle models named include the Jaguar XJ series and various Land Rover models like the Range Rover Evoque and Discovery Sport (Compl. ¶25).
Functionality and Market Context
The complaint alleges that Defendants' assembly operations perform "error free fastening or error-proofing automated assembly" (Compl. ¶31). These operations are alleged to use tooling, such as systems from Atlas Copco, that feature electronic controllers, position sensors, and operator feedback displays to control both the fastening sequence and the applied torque (Compl. ¶33, 42-44). A screenshot from an Atlas Copco video included in the complaint shows a user interface for a tool positioning system, displaying the job number and the sequence of steps (Compl. p. 18, ¶44). The complaint alleges that Defendants import and sell more than 100,000 such vehicles in the U.S. annually (Compl. ¶26).
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...is 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' assembly operations join components (e.g., seat backs to seat tracks) that are structurally designed to require a specific fastening sequence to prevent structural failure. | ¶31, ¶39 | col. 13:5-29 |
| providing an electronic controller having stored in a memory thereof before an operator has commenced...data representative of the location of the first fastening location...together with first order data indicating that a fastener must be inserted in the first fastening location at a point in time before a fastener is inserted in the second fastening location... | Defendants allegedly use an electronic controller with memory storing location data (e.g., x, y, z coordinates) for each fastener and data indicating the predetermined fastening sequence for those locations. | ¶42, ¶46 | col. 6:15-19 |
| sensing the position of the fastening tool; | The assembly operations allegedly use one or more sensors on a reaction arm to sense the position of the fastening tool and generate signals allowing a control system to compute its position. | ¶43 | col. 5:13-16 |
| electronically comparing the sensed position of the fastening tool with the data representative of the location of the first and second fastening locations to determine if the fastening tool is located in operative relation to one of the first and second fastening locations... | The assembly operations allegedly compare the tool's sensed position with the stored location data to determine if the tool is at a valid fastening location. | ¶44 | col. 7:1-6 |
| ...enabling the fastening tool, when it is positioned in operative relation to the second fastening location, only if the operator already has inserted a fastener in the first fastening location... | The system allegedly enables the tool only when it is at the correct location in the sequence (e.g., allowing fastening at location #2 only after location #1 is complete), with a display providing visual feedback. A screenshot from an Atlas Copco video shows a "blue display" to indicate the tool is in the right position (Compl. p. 18, ¶44). | ¶44 | col. 6:110-112 |
| providing a sequence output each time that the operator attempts to fasten a fastener...indicating whether the predetermined fastening sequence has been achieved; | The operations allegedly provide a sequence output, such as a display changing color. A complaint visual shows a "solid green display" indicating the job is done with the "right torque and the correct sequence," while a "red display alerts when the tool is out of position" (Compl. p. 19-20, ¶45). | ¶45 | col. 7:60-64 |
| ...the electronic controller also has stored in its memory first and second predetermined torque values... | The electronic controller allegedly stores predetermined torque values for each fastener location. A "Job example" from an Atlas Copco user guide, referenced in the complaint, shows different parameter sets ("Psets") with different target torques for a single job (Compl. p. 22, ¶46). | ¶46 | col. 8:30-36 |
| ...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 assembly operations allegedly require that the measured torque for the first fastener meets its predetermined value before the system allows the operator to proceed with fastening the second fastener. | ¶47 | col. 8:41-53 |
- Identified Points of Contention:
- Evidentiary Questions: The complaint relies heavily on publicly available marketing materials and user guides for third-party tooling (e.g., Atlas Copco) to describe Defendants' internal, overseas manufacturing processes (Compl. ¶¶33-47). A central question will be whether discovery can produce evidence directly linking these general capabilities to the specific processes Jaguar Land Rover actually uses, and whether those processes meet every limitation of the asserted claim.
- Technical Questions: The claim requires actively "enabling" the tool based on its position and sequence (col. 14:8-18). A key technical dispute may arise over whether the accused systems perform this specific function (i.e., a functional interlock) or if they merely provide warnings or guidance to the operator without physically preventing out-of-sequence operation.
V. Key Claim Terms for Construction
The Term: "enabling the fastening tool"
Context and Importance: This term appears in the core functional limitation of claim 31, which dictates how the system enforces the correct sequence. The infringement analysis will likely turn on whether the accused system's method of control meets the definition of "enabling." Practitioners may focus on this term because a system that merely alerts an operator to an error may not be considered to "enable" the tool in the same way as a system that actively prevents its use until the sequence is correct.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not explicitly define "enabling." A party could argue it encompasses any form of electronic control that signals to the operator and system that it is appropriate to proceed, without requiring a hard lockout.
- Evidence for a Narrower Interpretation: The specification describes a control logic where the tool is actively controlled, stating that if the tool is not in a proper position, it is "disabled" ('220 Patent, col. 6:110). The flowcharts in Figures 4 and 5 show distinct "Enable Fastening Tool" and "Disable Fastening Tool" steps, which suggests a binary, functional on/off state controlled by the system's logic ('220 Patent, FIG. 4, steps 110, 112).
The Term: "single process site"
Context and Importance: Claim 31 requires that the components, when placed together, form a "single process site" where the fastening occurs. The geographic and operational scope of the claim depends on this definition. Defendants may argue that a modern, complex assembly line consists of multiple process sites, potentially taking their operations outside the scope of the claim.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification uses the general term "assembly station" to describe the location of the work, which could be interpreted broadly to cover a large area or a series of related micro-steps ('220 Patent, col. 4:1-2).
- Evidence for a Narrower Interpretation: The preferred embodiment consistently illustrates a single article of assembly (a car seat) held in a single fixture at one station while a series of related fastening steps are performed on it ('220 Patent, FIG. 1). This could support a narrower construction limited to the operations performed on one workpiece in one fixed location or station.
VI. Other Allegations
- Indirect Infringement: The complaint alleges active inducement of infringement under 35 U.S.C. § 271(b) by "instructing suppliers" to practice the claimed invention (Compl. ¶49). The allegation of knowledge is based on "at least service of this Complaint" (Compl. ¶49).
- Willful Infringement: Willfulness is alleged based on Defendants' knowledge of the '220 Patent and their alleged infringement from the time they received notice of the lawsuit (Compl. ¶50).
VII. Analyst’s Conclusion: Key Questions for the Case
- A primary question will be one of evidentiary proof: Can Plaintiff, through discovery, establish that Defendants' specific, internal assembly processes used overseas mirror the functionality described in third-party marketing materials and, more importantly, practice every step of the asserted method claim? The case is brought under 35 U.S.C. § 271(g), placing the burden on the Plaintiff to prove the patented process was used to manufacture the imported vehicles.
- The case will likely involve a significant dispute over claim scope and function: Does the accused system's operational logic meet the claim requirement of actively "enabling the fastening tool" only when the correct sequence is followed? This will require a detailed claim construction and a technical comparison between a functional lockout, as suggested by the patent's embodiments, and a system that may only provide operator guidance.
- A third key issue will be the impact of the patent's prosecution history: The patent-in-suit is a narrowing reissue that followed the invalidation of claims in the original patent. This history will be scrutinized during claim construction and may give rise to arguments of prosecution history estoppel, potentially limiting the patent's scope and foreclosing reliance on the doctrine of equivalents for key claim elements.