DCT
1:22-cv-01430
Lund Motion Products Inc v. Rough Country LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Lund Motion Products, Inc. d/b/a AMP Research (Delaware)
- Defendant: Rough Country, LLC (Delaware)
- Plaintiff’s Counsel: Shaw Keller LLP
- Case Identification: 1:22-cv-01430, D. Del., 10/28/2022
- Venue Allegations: Venue is alleged to be proper in the District of Delaware because Defendant is a Delaware corporation and therefore resides in the district.
- Core Dispute: Plaintiff alleges that Defendant’s aftermarket “Retract Step Kits” infringe four patents related to the control and operation of automated retractable vehicle steps.
- Technical Context: The technology concerns automated, retractable running boards for high-clearance vehicles, which deploy when a door is opened and retract when it is closed, primarily by interfacing with the vehicle's existing electronic systems.
- Key Procedural History: The complaint alleges that Defendant received pre-suit notice of U.S. Patent Nos. 9,272,667, 9,527,449, and 9,511,717 as of March 16, 2021, and of U.S. Patent No. 11,198,395 as of January 31, 2022, which may form the basis for the willfulness allegations.
Case Timeline
| Date | Event |
|---|---|
| 2013-11-01 | Earliest Priority Date for ’667, ’449, ’717, ’395 Patents |
| 2016-03-01 | U.S. Patent No. 9,272,667 Issues |
| 2016-12-06 | U.S. Patent No. 9,511,717 Issues |
| 2016-12-27 | U.S. Patent No. 9,527,449 Issues |
| 2021-03-16 | Alleged Notice of ’667, ’449, and ’717 Patents to Defendant |
| 2021-12-14 | U.S. Patent No. 11,198,395 Issues |
| 2022-01-31 | Alleged Notice of ’395 Patent to Defendant |
| 2022-10-28 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,272,667, “Automated Retractable Vehicle Step,” Issued March 1, 2016
The Invention Explained
- Problem Addressed: The patent describes the installation of aftermarket automated running boards as a complex and expensive process that often requires significant disassembly of vehicle components or modification of factory wiring, such as splicing into wires in the vehicle doors ( ’667 Patent, col. 8:10-24).
- The Patented Solution: The invention proposes a "plug-and-play" system that simplifies installation by including a vehicle interface designed to connect directly to a vehicle's pre-existing electronics port, such as an On-Board Diagnostic (OBD) port. This interface electronically receives data, such as door open/closed status, directly from the vehicle's existing computer system, which a controller then uses to operate the retractable step, thereby avoiding the need to modify vehicle wiring (’667 Patent, Abstract; col. 8:60-9:9; Fig. 2A).
- Technical Importance: This approach significantly reduces the technical skill, time, and cost required for installation, making automated retractable steps more accessible for do-it-yourself installation and reducing the risk of installation errors (’667 Patent, col. 1:47-54).
Key Claims at a Glance
- Independent Claim 1 is asserted (Compl. ¶31).
- Essential elements of Claim 1 include:
- A powered retractable vehicle step assist system comprising a movable stepping member, at least one support member, and a motor.
- A vehicle interface configured to connect with an already existing electronics port of the vehicle and to electronically receive data from that port.
- A controller configured to use the received data to cause the motor to move the stepping member.
- The data comprises door opened/closed status information originating from door electronics that do not incorporate any wireless sensors.
U.S. Patent No. 9,527,449, “Controlling a Powered Vehicle Step,” Issued December 27, 2016
The Invention Explained
- Problem Addressed: The patent addresses the technical challenge of integrating an aftermarket step system with a vehicle's complex electronics in a reliable and non-invasive manner (’449 Patent, col. 1:45-53).
- The Patented Solution: The invention claims a method for controlling a powered vehicle step. The method involves electronically obtaining door status information directly from a vehicle’s digital communication bus, processing that information with an algorithm to decide if step movement is appropriate, and then commanding a motor to move the step. This leverages the vehicle's own data network for control signals (’449 Patent, Abstract; col. 9:61-10:11).
- Technical Importance: This method provides a standardized way to control an aftermarket accessory by using the vehicle's native digital communication infrastructure (e.g., the CAN bus accessed via an OBD port), which avoids custom wiring for different vehicle models and preserves the integrity of the vehicle's electrical system (’449 Patent, col. 8:25-43).
Key Claims at a Glance
- Independent Claim 12 is asserted (Compl. ¶47).
- Essential elements of Claim 12 include:
- A method of controlling an after-market powered vehicle step system.
- Electronically obtaining door status information from a digital communication bus of the vehicle.
- Electronically processing the door status information according to an algorithm to determine that movement of a stepping deck is appropriate.
- Commanding a motor to cause movement of the stepping deck between a retracted position and a deployed position.
U.S. Patent No. 9,511,717, “Automated Retractable Vehicle Step,” Issued December 6, 2016
Technology Synopsis
This patent describes a vehicle step assist system comprising a step unit and a vehicle interface that connects to an existing electronics port, such as an OBDII port, to receive data generated by the vehicle's electronics. A controller receives this data from the interface and issues commands to operate the step unit, thereby addressing the problem of complex aftermarket installation by leveraging the vehicle's existing data infrastructure (’717 Patent, Abstract; col. 8:44-53).
Asserted Claims
Claim 9 is asserted (Compl. ¶64).
Accused Features
The complaint alleges that Defendant's "Retract Step Kits" include a step unit, a vehicle interface for connecting to the OBDII port, and a controller that operates the step based on data received from that port (Compl. ¶67-70).
U.S. Patent No. 11,198,395, “Automated Retractable Vehicle Step,” Issued December 14, 2021
Technology Synopsis
This patent is directed to a powered retractable step system designed for vehicles with first and second doors (e.g., crew cab trucks). The invention features a stepping member dimensioned to span and assist passengers at both doors, supported by first and second support members. The system is controlled by a controller that receives door status data from the vehicle's existing computer system, which solves the problem of integrating a multi-door running board without requiring custom wiring to each door (’395 Patent, Abstract; col. 1:22-31).
Asserted Claims
Claim 1 is asserted (Compl. ¶77).
Accused Features
The accused "Retract Step Kits," particularly those for "4-Door Crew Cab models," are alleged to have a stepping member that spans both doors, first and second support members, a drive unit, and a controller that operates the step based on door status data received from the vehicle's computer system via a vehicle interface (Compl. ¶82-88).
III. The Accused Instrumentality
Product Identification
Defendant’s "Retract Step Kits" are the accused products (Compl. ¶21).
Functionality and Market Context
The Accused Products are aftermarket, electrically powered retractable running boards for various truck and SUV models (Compl. ¶21, Ex. F). The system connects to the vehicle's battery for power and to the vehicle's On-Board Diagnostic (OBDII) port for control signals (Compl. ¶38, ¶54). A "step control module" allegedly receives door open/closed status information from the OBDII port and, in response, commands a motor to deploy or retract the step (Compl. ¶39, ¶55). The complaint provides an image of the "step control module and harnesses" as part of the accused kit (Compl. ¶39, Photo 13). The products are allegedly sold nationwide through Defendant's website and a network of authorized dealers (Compl. ¶22-23).
IV. Analysis of Infringement Allegations
U.S. Patent No. 9,272,667 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a powered retractable vehicle step assist system configured for use with a vehicle | The Accused Products are a powered retractable vehicle step assist system for use with vehicles. | ¶34 | col. 8:44-46 |
| a stepping member having a stepping surface and movable between a retracted position and a deployed position | The Accused Products include a stepping member that moves between retracted and deployed positions via a motorized "swing-out" function. | ¶35 | col. 8:47-49 |
| at least one support member connectable with respect to an underside of the vehicle and connected to the stepping member | The Accused Products include at least one support member that connects to the vehicle's underside and to the stepping member to provide support. An image from the installation manual shows the step being secured with bolts (Compl. ¶37, Photo 38). | ¶36 | col. 8:50-54 |
| a motor operably coupled to the support member and capable of effectuating movement of the stepping member | The Accused Products include a motor coupled to the support member to drive the movement of the step. | ¶37 | col. 8:55-59 |
| a vehicle interface configured to connect with an already existing electronics port of the vehicle, namely the OBDII port . . . configured to electronically receive data | The Accused Products include a vehicle interface with a wiring harness that connects to the vehicle's stock OBDII port to receive data. An image shows the "OBDII / White Connector" that plugs into the vehicle (Compl. ¶39, Photo 19). | ¶38 | col. 8:60-65 |
| a controller in electronic communication with the motor . . . configured, in response to the data received . . . to cause the motor to effectuate movement | The Accused Products include a "step control module" that communicates with the motor and, in response to data from the OBDII port, causes the motor to move the stepping member. | ¶39 | col. 8:66-9:4 |
| wherein the data comprises door opened/closed status information originating from door electronics that do not incorporate any wireless sensors | The complaint alleges the door status data originates from wired door electronics and latching mechanisms in the relevant vehicles, not from wireless sensors. | ¶40 | col. 9:5-9 |
Identified Points of Contention
- Scope Questions: A potential question for construction is whether the term "already existing electronics port" is limited to the specific OBD port embodiment described in the patent, or if it covers any pre-existing port that provides the necessary data.
- Technical Questions: The complaint alleges that the door status information originates from "door electronics that do not incorporate any wireless sensors" (Compl. ¶40). A key factual question will be whether this is true across all vehicle models for which the Accused Products are sold, as the complaint primarily provides evidence for certain GM models.
U.S. Patent No. 9,527,449 Infringement Allegations
| Claim Element (from Independent Claim 12) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| electronically obtaining door status information from a digital communication bus of the vehicle | The controller of the Accused Products is configured to receive door status information obtained from the vehicle's OBDII port, which is alleged to be a digital communication bus. An image shows the OBDII plug being connected to the vehicle's port (Compl. ¶54, Photo 21). | ¶54, ¶57 | col. 9:61-64 |
| electronically processing the door status information according to an algorithm to determine that movement of a stepping deck of the powered vehicle step is appropriate | The controller of the Accused Products is configured to electronically process the received door status information to determine that step movement is appropriate, such as extending the step when a door opens. | ¶55 | col. 10:1-4 |
| commanding a motor of the powered vehicle step which is drivably coupled to the stepping deck to cause movement of the stepping deck | The controller of the Accused Products is configured to command the motor to move the stepping deck between its retracted and deployed positions based on the processed door status information. | ¶56 | col. 10:5-8 |
Identified Points of Contention
- Scope Questions: The dispute may focus on whether the accused controller's logic constitutes "processing the door status information according to an algorithm" as claimed. The scope of "algorithm" may be a central issue for claim construction.
- Technical Questions: A factual question may be whether the OBDII port in every accused vehicle application functions as a "digital communication bus" that provides the specific "door status information" required by the claim.
V. Key Claim Terms for Construction
The Term: "already existing electronics port" (’667 Patent, Claim 1)
- Context and Importance: This term is central to the "plug-and-play" concept of the invention. Its construction will determine whether the accused system, which connects to a standard OBDII port, infringes. Practitioners may focus on this term because its scope defines the boundary between infringing non-invasive systems and non-infringing systems that might require different connection methods.
- Evidence for a Broader Interpretation: The specification describes the port in general terms as a connection to "existing vehicle electronics" and an "existing communication bus," with the OBD port being just one example (’667 Patent, col. 8:31-35), which may support a construction not limited to a specific type of diagnostic port.
- Evidence for a Narrower Interpretation: The primary embodiment described and depicted in the patent consistently shows a connection to an OBD-style port (240) (’667 Patent, Figs. 2A-2D; col. 14:41-45). This consistent focus could be used to argue for a narrower construction limited to diagnostic ports.
The Term: "algorithm" (’449 Patent, Claim 12)
- Context and Importance: This term defines the processing step that translates raw door status data into a command for the motor. Its definition is critical because infringement depends on whether the accused controller's logic meets the claim's requirement for an "algorithm."
- Evidence for a Broader Interpretation: The patent does not define a specific mathematical formula but describes the algorithm's function as determining "that movement of a stepping deck... is appropriate" (’449 Patent, col. 10:2-4), suggesting any logical process that achieves this outcome could qualify.
- Evidence for a Narrower Interpretation: A defendant may argue that the term, in the context of the patent, requires a specific set of logical rules beyond a simple "if door open, then deploy" command, potentially pointing to more complex logic disclosed in the specification for handling various vehicle states. The complaint does not provide sufficient detail for analysis of the specific algorithm used by the accused product.
VI. Other Allegations
- Indirect Infringement: The complaint alleges active inducement for all asserted patents, stating that Defendant provides installation instructions (Exhibit G) that encourage and instruct end-users to install and use the Accused Products in an infringing manner (Compl. ¶41, ¶58, ¶71, ¶89). Contributory infringement is also alleged on the basis that the Accused Products are a material part of the patented inventions, are not staple articles of commerce, and are known by Defendant to be especially adapted for use in an infringing manner (Compl. ¶42, ¶59, ¶72, ¶90).
- Willful Infringement: The complaint alleges willful infringement based on pre-suit knowledge. It claims Defendant was notified of the ’667, ’449, and ’717 patents by correspondence on March 16, 2021, and of the ’395 patent on January 31, 2022 (Compl. ¶24). The allegations state that Defendant’s continued infringement after these dates has been willful, deliberate, and intentional (Compl. ¶43, ¶60, ¶73, ¶91).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of technical implementation: does the accused system's method of receiving and processing signals from a vehicle's OBDII port meet the specific claim limitations requiring, for example, that the data originates from "door electronics that do not incorporate any wireless sensors" and is processed according to an "algorithm" as contemplated by the patents?
- The case may turn on a question of definitional scope: how broadly will the court construe the term "already existing electronics port"? Its interpretation will determine whether the "plug-and-play" nature of the accused product, which is central to the allegations, falls within the patent claims that sought to simplify aftermarket installation by avoiding modification of vehicle wiring.
- A key factual question for potential damages enhancement will be the impact of pre-suit notice: given the allegation that Defendant had knowledge of three of the patents for over 19 months prior to the suit, the court will likely examine what evidence supports or rebuts the claim that any continuing infringing activity was willful.