DCT
1:19-cv-00846
Wildcat Licensing Wi LLC v. Magna Intl Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Wildcat Licensing WI LLC (Wisconsin)
- Defendant: Magna International Inc., et al. (Canada/Delaware)
- Plaintiff’s Counsel: Mintz Levin Cohn Ferris Glovsky and Popeo, P.C.; Bayard, P.A.
- Case Identification: 1:19-cv-00846, D. Del., 05/06/2019
- Venue Allegations: Venue is alleged to be proper as Defendants are corporations incorporated in Delaware, have purposefully availed themselves of Delaware law, and have sold products in the district that are manufactured using the allegedly infringing processes.
- Core Dispute: Plaintiff alleges that Defendants’ manufacturing and assembly systems for automotive components infringe patents related to error-proofing methods that ensure fasteners are applied in the correct sequence and with the proper torque.
- Technical Context: The technology addresses the need for reliable, "fool-proof" assembly in high-volume manufacturing, particularly in the automotive industry, to prevent costly structural failures and recalls caused by operator error.
- 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) whose claims were previously invalidated in inter partes review (IPR) proceedings. The patent owner amended the claims during the reissue proceedings, which successfully issued after the Patent Trial and Appeal Board (PTAB) reversed an examiner's rejections. This history suggests the new, narrower claims were crafted to overcome the prior art that invalidated the original patents, a factor that may be relevant to the patents' validity.
Case Timeline
| Date | Event |
|---|---|
| 2001-11-19 | Priority Date for U.S. RE47,220 and U.S. RE47,232 |
| 2004-07-20 | Issue Date for original U.S. Patent 6,763,573 (parent of RE47232) |
| 2006-06-20 | Issue Date for original U.S. Patent 7,062,831 (parent of RE47,220) |
| 2008 | Original developer LMS-Walt ceased operations |
| 2018-08-23 | PTAB reverses examiner's rejections of reissue claims |
| 2019-02-05 | Issue Date for U.S. Patent RE47,220 |
| 2019-02-12 | Issue Date for U.S. Patent RE47,232 |
| 2019-05-06 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Reissued Patent No. RE47,220 - "Method for Monitoring Proper Fastening of an Article of Assembly at More Than One Location," Issued Feb. 5, 2019
The Invention Explained
- Problem Addressed: In high-volume assembly lines, such as for automotive seats, workers must install multiple fasteners. Existing systems that simply count the number of times a torque value is achieved could be "tricked," either accidentally (e.g., forgetting a screw, or driving the same screw twice) or intentionally, leading to improperly assembled products. (Compl. ¶4; ’220 Patent, col. 2:13-35).
- The Patented Solution: The patent describes a method to "fool-proof" the assembly process. It uses a system that electronically monitors the physical position of the fastening tool relative to the workpiece. The system has pre-programmed data for the correct location and sequence of each fastener. It enables the tool only when it is at the correct location for the current step in the sequence and verifies that the correct torque is applied before allowing the sequence to proceed. (Compl. ¶5; ’220 Patent, Abstract; Fig. 4). This ensures each fastener is installed, in the right place, in the right order, and with the right torque. (’220 Patent, col. 4:9-24).
- Technical Importance: This approach combines position sensing with sequence and torque enforcement, aiming to eliminate a category of human error in critical manufacturing operations that simple torque counting could not. (Compl. ¶5-6).
Key Claims at a Glance
- The complaint asserts at least independent claim 31. (Compl. ¶39).
- Essential Elements of Claim 31:
- Providing first and second 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" with multiple fastening locations.
- Manually fastening with a tool.
- Providing an electronic controller with stored data representing the location and required sequence for the fastening locations.
- Sensing the tool's position.
- Electronically comparing the sensed position to the stored data.
- Enabling the tool to fasten only when it is in the correct location for the required sequence.
- Providing a sequence output indicating if the sequence has been achieved.
- Measuring the applied torque and requiring it to equal a predetermined value before allowing the sequence to advance.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Reissued Patent No. RE47,232 - "Assembly System for Monitoring Proper Fastening of an Article of Assembly at More Than One Location," Issued Feb. 12, 2019
The Invention Explained
- Problem Addressed: The problem is identical to that described in the ’220 Patent: the unreliability of conventional assembly systems that cannot enforce both the sequence and torque of fastening operations, creating a risk of faulty products. (Compl. ¶4, 71; ’232 Patent, col. 2:2-35).
- The Patented Solution: This patent claims the physical system that carries out the error-proofing method. The system includes a fixture to hold components, a fastening tool, at least one sensor to track the tool's position, and an electronic controller. The controller contains a pre-programmed sequence and compares the tool's real-time position (from the sensor) to the program, enabling the tool and verifying torque only when the operator follows the correct procedure. (Compl. ¶71; ’232 Patent, Abstract; Fig. 5).
- Technical Importance: By embodying the error-proofing logic in a tangible system of integrated components (controller, tool, sensor), the invention provides a complete, deployable solution for assembly lines. (Compl. ¶71).
Key Claims at a Glance
- The complaint asserts at least independent claim 26. (Compl. ¶70).
- Essential Elements of Claim 26:
- 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 a memory storing location and sequence data.
- The controller executes a program to monitor the sequence, compare the tool's sensed position to the stored data, and enable the tool according to the sequence.
- The system also measures and compares applied torque to predetermined values as part of the sequence enforcement.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
- Defendants' "Assembly Operations" and "Assembly Systems" used to manufacture and assemble articles such as automotive seats, transmissions, suspensions, and other components. (Compl. ¶36-37, 71).
Functionality and Market Context
- The complaint alleges that Defendants' assembly processes are designed to be "error/mistake proof" and are used to supply major automotive manufacturers like Ford and FCA US LLC. (Compl. ¶41-45). These processes allegedly utilize tooling from suppliers such as Atlas Copco and Advanced Manipulator. (Compl. ¶47, 50). A screenshot from a Magna supplier manual describes the goal of its "Error & Mistake Proofing" as creating a "bullet-proof" system to ship zero defects, with a focus on removing "operator error." (Compl. ¶41, p. 13). The systems allegedly use electronic controllers, position-aware fastening tools (e.g., torque arms), and sensors to ensure that fasteners are applied in a predetermined sequence and with the correct torque. (Compl. ¶58, 62). A photo provided in the complaint shows an example of such a tool, "The Locator Smart Arm" from Advanced Manipulator, which is identified as a Magna supplier. (Compl. ¶51, p. 17).
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... 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 to reduce the risk of structural failure... | Defendants' articles of assembly are allegedly structurally designed such that a specific fastening sequence must be followed to reduce the risk of structural failure. (Compl. ¶55). | ¶55 | col. 13:20-30 |
| providing an electronic controller having stored in a memory thereof... data representative of the location of the first fastening location... 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' systems allegedly use an electronic controller that stores location data (e.g., x, y, z coordinates) and data indicating a predetermined fastening sequence for all fastening locations. An Atlas Copco user guide, cited in the complaint, shows a "Job example" where different bolts requiring different torques are organized into a multi-step job list. (Compl. ¶62, p. 28). | ¶58, 62 | col. 13:38-54 |
| sensing the position of the fastening tool; electronically comparing the sensed position of the fastening tool with the data representative of the location of the first and second fastening locations... | Defendants' systems allegedly use one or more sensors on the fastening tool (e.g., on a reaction arm) to generate signals that allow the controller to compute the tool's position and compare it to the stored location data. (Compl. ¶59-60). | ¶59-60 | col. 13:62-67 |
| enabling the fastening tool... only if the operator already has inserted a fastener in the first fastening location... providing a sequence output each time that the operator attempts to fasten a fastener... | The controller allegedly enables the tool only when its position conforms to the predetermined sequence. The complaint includes a screenshot from an Atlas Copco video showing a UI where the display is blue to indicate the "tool is in the right position" and red when "out of position," which allegedly provides sequence output and guarantees the correct sequence. (Compl. ¶60, p. 24; Compl. ¶61, p. 25-26). | ¶60-61 | col. 14:1-21 |
| when the operator's use of the fastening tool conforms to the predetermined sequence... measuring torque applied to fastener... and then comparing the measured torque to the first predetermined torque value, (b) requiring that the torque applied to the fastener... equal the first predetermined torque value before the operator is allowed to insert a fastener in the second... | When the sequence is followed, Defendants' operations allegedly measure the torque applied to each fastener and compare it to a stored predetermined value, requiring a match before the operator can proceed. A screenshot from an Atlas Copco video shows a "solid green display" that allegedly "says the job is done with the right torque and the correct sequence." (Compl. ¶61, p. 25; Compl. ¶63). | ¶62-63 | col. 14:35-51 |
- Identified Points of Contention:
- Scope Question: A central issue will be the construction of "structurally designed so that... a fastener must be inserted" in a certain sequence. Defendants may argue this limitation attempts to claim the un-patentable workpiece itself, rather than the method of assembling it. Plaintiff will likely contend it is a necessary condition defining the type of components the claimed method is intended for.
- Technical Question: What evidence does the complaint provide that the assembly of all accused articles (seats, transmissions, etc.) is governed by the specific, rigid, electronically-enforced sequence-then-torque logic of claim 31, as opposed to more general error-proofing techniques? The complaint relies heavily on marketing materials from tooling suppliers, raising the question of how these generic capabilities are specifically implemented in Defendants' proprietary assembly operations.
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... a fastener must be inserted in the first fastening location before a fastener is inserted in the second... | Defendants' articles of assembly are allegedly structurally designed such that they determine a specific fastening sequence that must be followed to reduce structural failure risk. (Compl. ¶86). | ¶86 | col. 16:51-64 |
| a fastening tool adapted to fasten fasteners into the single process site...; at least one sensor providing a sensor output indicating when the fastening tool is at the first and second fastening locations... | Defendants' Assembly Systems allegedly include a fastening tool (e.g., a torque arm) and at least one sensor that provides a sensor output indicating the tool's position at various fastening locations. (Compl. ¶88-89). | ¶88-89 | col. 17:1-12 |
| an electronic controller... having stored in a memory thereof... data representative of the location of the first fastening location... with first order data indicating that a fastener must be inserted in the first... before a fastener is inserted in the second... | Defendants' systems allegedly include an electronic controller that stores location and sequence data before the operation begins, forming a predetermined sequence that must be followed. (Compl. ¶90). | ¶90 | col. 17:13-39 |
| 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... monitoring the sequence... electronically comparing the sensed position... and... using the order data... to (i) enable the fastening tool... | The controller allegedly executes a program that monitors and enforces the sequence by comparing the tool's sensed position to the stored data, enabling the tool only when the operator follows the correct sequence. The complaint presents a screenshot of the Atlas Copco system UI showing a job with four numbered steps, with the current step highlighted, to allege this functionality. (Compl. ¶92, p. 46). | ¶92 | col. 17:45-66 |
| wherein the execution of the predetermined sequence program... also (a) uses the fastening monitor to measure torque applied... and (d) requires that the torque... equal the second predetermined torque value... | The controller's program allegedly requires using a fastening monitor to measure the applied torque and ensure it matches the predetermined torque value for each step in the sequence before the assembly can be completed. (Compl. ¶95). | ¶95 | col. 18:24-52 |
- Identified Points of Contention:
- Scope Question: As with the ’220 patent, the "structurally designed" limitation on the workpiece will be a critical point of dispute regarding claim scope and potential invalidity arguments.
- Evidentiary Question: The complaint alleges a system with a specific architecture (fixture, tool, sensor, controller) performing a specific software-driven logic. Plaintiff will need to produce evidence that Defendants' systems, as actually configured and used in their facilities, possess all of these components and execute the claimed logic, beyond what is shown in general-purpose supplier documentation.
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" (Appears in claim 31 of '220 and claim 26 of '232)
Context and Importance: This limitation appears to be a core element added during the reissue process to distinguish the invention from prior art. Its construction will be dispositive for both infringement and validity. Practitioners may focus on this term because its language appears to describe a characteristic of the physical workpiece being assembled, not the assembly method or system itself. Defendants will likely argue this is an improper attempt to claim the article of manufacture, rendering the claim indefinite or invalid, and/or that their workpieces are not so "designed." Plaintiff will argue it properly limits the claimed method/system to a specific technical environment where sequence is critical due to the parts' physical nature.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation (Limiting the Method/System): The claims recite a "method for assembling components" and an "assembly system," suggesting the "structurally designed" language merely defines the context or intended environment for the claimed method/system, not an element of the workpiece itself. The specification's focus is on the control system, not the design of the seat frame. (’220 Patent, col. 4:9-24).
- Evidence for a Narrower Interpretation (Limiting the Workpiece): The claim language is explicit: "wherein the article of assembly is structurally designed." This language is not in the preamble. The patent does not appear to provide an explicit definition or specific examples of such structural design, which could lead to arguments that the term is ambiguous or lacks written description support.
The Term: "single process site" (Appears in claim 31 of '220 and claim 26 of '232)
Context and Importance: The claims state that first and second physically separate components are brought together to form a "single process site." The definition of "single" in this context is critical. If "single process site" is construed narrowly to mean a pre-existing, monolithic part, it may not read on the alleged process of joining two separate components.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim itself clarifies that this "single process site" is formed when "discrete portions of the first and second components" are "placed together," supporting the idea that it is a temporary, functional grouping rather than a permanent, monolithic object. (’220 Patent, col. 13:10-14).
- Evidence for a Narrower Interpretation: The use of the word "single" could be argued to imply a unitary structure. The specification discusses assembling parts of a "seat" held in a "fixture," but the precise boundaries of the "single process site" are not explicitly defined, leaving room for debate. (’220 Patent, Fig. 1).
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement under 35 U.S.C. § 271(b). The basis for this allegation is that Defendants instruct suppliers to practice the claimed invention, citing the "Magna Integram-Windsor Seating Supplier Manual" as an example of such instruction. (Compl. ¶65, 97).
- Willful Infringement: Willfulness is alleged based on Defendants' knowledge of the patents and their infringement "since at least service of this Complaint in this matter." (Compl. ¶66, 98). This is a standard post-suit willfulness allegation.
VII. Analyst’s Conclusion: Key Questions for the Case
This case appears to present focused questions of claim interpretation and evidentiary proof, stemming from claim language likely added to overcome prior art during a contentious reissue proceeding. The key questions for the court will likely be:
A core issue will be one of claim scope and validity: Is the limitation "structurally designed so that..." a valid and enforceable feature of the claimed method/system, or is it an improper attempt to claim the physical characteristics of the unpatented article being assembled? The answer will likely determine the ultimate viability of the asserted claims.
A second central question will be one of evidentiary sufficiency: Can Plaintiff demonstrate that Defendants' diverse, real-world assembly operations specifically implement the rigid, multi-step, sequence-and-torque logic recited in the claims? The dispute may hinge on whether the general "error-proofing" capabilities of the supplier tooling cited in the complaint are actually used by Defendants in the precise, infringing manner required by the patent claims across their various product lines.