DCT
6:22-cv-00468
Norge Holdings LLC v. Axim USA LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Norge Holdings, LLC (Florida) and Alien Technologies Corp (Florida)
- Defendant: Axim USA LLC (Florida)
- Plaintiff’s Counsel: Hamilton, Miller & Birthisel, LLP; Taft Stettinius & Hollister LLP
- Case Identification: 6:22-cv-00468, M.D. Fla., 03/09/2022
- Venue Allegations: Venue is alleged to be proper as Defendant is a Florida LLC that resides in, conducts regular business in, and has committed the alleged acts of infringement in the judicial district.
- Core Dispute: Plaintiffs allege that Defendant’s ROLLNJACK hardtop removal device infringes a patent related to a mobile apparatus for removing, storing, and installing sport utility vehicle hardtops.
- Technical Context: The technology relates to mechanical lift devices for the automotive aftermarket, specifically targeting owners of convertible sport utility vehicles (like the Jeep Wrangler) who wish to remove and store heavy hardtops.
- Key Procedural History: Plaintiff Norge Holdings, LLC is the owner of the patent-in-suit, and Plaintiff Alien Technologies Corp is the exclusive licensee. Plaintiffs allege they have provided constructive notice of the patent by marking their own commercial product, the "TOP LIFT PROS Jeep Hard Top Removal Tool," with the patent number.
Case Timeline
| Date | Event |
|---|---|
| 2015-01-27 | ’823 Patent Priority Date |
| 2017-05-09 | ’823 Patent Issue Date |
| 2017-05-10 | Alien Technologies becomes exclusive licensee of the ’823 Patent |
| 2022-03-09 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,643,823 - "Sport Utility Vehicle Mobile Hard Top Removal, Store, and Install Device," issued May 9, 2017
The Invention Explained
- Problem Addressed: The patent describes that removable hardtops for sport utility vehicles (SUVs) are often "relatively heavy, bulky, and awkward to handle," making removal and installation a significant problem for a single person ('823 Patent, col. 1:36-40). While overhead lifts exist, they require installation in a garage or similar structure and are not portable, limiting their use for those who rent or wish to remove the top while away from home (col. 1:50-67).
- The Patented Solution: The invention is a freestanding, mobile apparatus on casters designed to allow a single operator to remove, store, and reinstall an SUV hardtop ('823 Patent, col. 2:8-13). The device features a "C" shaped structure, comprising a wheeled base unit that extends under the vehicle, a vertical support structure, and a platform assembly that engages the hardtop ('823 Patent, col. 4:1-13). A lifting mechanism, such as a hand-operated ratcheting lever, allows the operator to lift the hardtop off the vehicle, after which the entire apparatus can be rolled away for storage ('823 Patent, col. 2:46-58).
- Technical Importance: The invention purports to provide a portable, non-permanent solution that enables a single person to manage a heavy SUV hardtop, addressing shortcomings of both manual lifting and permanently installed garage hoists ('823 Patent, col. 2:17-35).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶16).
- The essential elements of independent claim 1 are:
- An apparatus for removing, storing, and installing removable hardtop devices from automobiles.
- A movable base unit sufficiently long and wide to support the apparatus.
- A vertical support structure with a lower end affixed to the base and an upper end attached to a means for vertical lifting.
- A means for vertical lifting connected to the vertical support to exert force for removing, sustaining, and lowering the hardtop.
- A platform structure attached to the lifting means that interfaces with, secures, and supports the hardtop.
- The apparatus can be positioned to the hardtop on the automobile and selectively raised or lowered.
- The complaint does not explicitly reserve the right to assert dependent claims, but the prayer for relief requests judgment on "one or more claims" (Compl. p. 17).
III. The Accused Instrumentality
Product Identification
- The "ROLLNJACK Jeep hardtop removal product" (Compl. ¶14).
Functionality and Market Context
- The complaint alleges the ROLLNJACK is a mobile device used to remove and install Jeep hardtops (Compl. ¶27, p. 8). The device is depicted as having a wheeled base, a vertical column, and a hand-operated crank or handle described as a "Safe self-braking lifting/installation jack" to raise and lower a platform that engages the hardtop (Compl. ¶27, p. 9). The complaint alleges that Defendant Axim is the "sole partnered retailer" for the sale of the ROLLNJACK product on Amazon.com (Compl. ¶15). A screenshot from an Amazon storefront page is provided as evidence of this relationship (Compl. ¶15, p. 5).
IV. Analysis of Infringement Allegations
’823 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a movable base unit which is sufficiently long and wide to support the apparatus from longitudinal and axial moments with and without the hardtop installed; | The ROLLNJACK product has a wheeled base unit that supports the apparatus. A photo depicts a T-shaped base with casters. | ¶27, p. 8 | col. 4:14-24 |
| a vertical support structure having a lower and upper ends, wherein said lower end is affixed to said movable base and said upper end is attached to a means for vertical lifting; | The product has a vertical support structure connected to the base and a lifting mechanism. A photo shows a vertical mast assembly. | ¶27, p. 9 | col. 4:51-54 |
| a means for vertical lifting which is connected to said vertical support structure and allows the apparatus to exert force vertically for removing the hardtop from the automobile, sustaining the hardtop at a fixed height... and allowing the hardtop to be controllably lowered... | The product includes a "Safe self-braking lifting/installation jack" with a "TurnNGo Handle" to lift and lower the top. A photo depicts a hand crank on the vertical mast. | ¶27, p. 9 | col. 5:18-21 |
| a platform structure attached to said vertical lifting means which interfaces with the hardtop to distribute lifting forces evenly... and is capable of securing and supporting the hardtop longitudinally and axially... | The product has a platform assembly that attaches to the lifting mechanism and interfaces with the Jeep hardtop. A photo shows the platform assembly positioned over a hardtop window opening. | ¶27, p. 10 | col. 5:26-40 |
| wherein the apparatus may be positioned to the hardtop while is installed on the automobile and selectively raised or lowered by said vertical lifting means. | The product can be positioned relative to the Jeep hardtop and then operated to lift the top. A photo shows the apparatus positioned at the rear of a Jeep with the platform aligned with the hardtop. | ¶27, p. 10 | col. 8:30-39 |
Identified Points of Contention
- Scope Questions (Means-Plus-Function): A central dispute may arise from the "means for vertical lifting" limitation. This term may be construed under 35 U.S.C. § 112(f), limiting its scope to the corresponding structure disclosed in the specification and its equivalents. The patent describes a specific ratcheting lever mechanism with a pawl and gear ('823 Patent, col. 6:15-67). The infringement analysis will question whether the accused product's "Safe self-braking lifting/installation Jack" and "TurnNGo Handle" (Compl. ¶27, p. 9) is structurally equivalent to the patent's disclosed ratcheting system.
- Technical Questions: The claim requires the platform structure to be "capable of securing and supporting the hardtop longitudinally and axially" and to "distribute lifting forces evenly." The complaint provides a photo of the accused platform, which appears to engage the hardtop (Compl. ¶27, p. 10). The case may require evidence demonstrating how, or if, the accused platform meets these specific functional requirements of securing and distributing forces as claimed.
V. Key Claim Terms for Construction
- The Term: "means for vertical lifting"
- Context and Importance: This term appears in an independent claim and is drafted in means-plus-function format. Its construction will be critical because the scope of the claim will be limited to the specific structure disclosed in the patent for performing the lifting function, and its equivalents. The infringement question will turn on a direct comparison between the accused product's crank-based jack and the patent's disclosed structure.
- Intrinsic Evidence for Interpretation:
- Evidence for a Narrower Interpretation: The specification discloses a specific corresponding structure: a ratcheting lift assembly comprising a "lift lever," "vertical platform push rods," a "ratcheting mechanism," and a release mechanism ('823 Patent, col. 5:15-18). This ratcheting mechanism is further detailed as including a "semi-circular shaped gear with a plurality of teeth" and a "spring loaded finger" or pawl that engages the gear teeth to prevent downward movement ('823 Patent, col. 6:60-67; col. 7:1-21). A court would look to these specific components to define the scope of the claim.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement, stating that Defendant "knowingly provides the accused ROLLNJACK product to its customers and encourages and instructs them on how to use it in a manner that directly infringes" Claim 1 (Compl. ¶40).
- Willful Infringement: Willfulness is alleged based on both pre-suit and post-suit knowledge. The complaint alleges, on information and belief, that Defendant was aware of the '823 patent before it began selling the accused product (Compl. ¶18, 31). It further alleges that Defendant had actual notice by "viewing the '823 patent number as it is used with Plaintiff Alien's branded TOP LIFT PROS Jeep Hard Top Removal Tool" (Compl. ¶28, 39) and by the filing of the complaint itself.
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this case may depend on the court’s answers to two central questions:
A core issue will be one of structural equivalence: under a means-plus-function analysis, is the accused product's "self-braking lifting/installation Jack" operated by a hand crank structurally equivalent to the "means for vertical lifting"—specifically, the ratcheting lever, gear, and pawl system—disclosed in the '823 patent?
A key evidentiary question will be one of functional performance: does the evidence show that the accused product’s "platform structure" performs the specific functions of "distributing lifting forces evenly" and "securing and supporting the hardtop longitudinally and axially," as required by the plain language of Claim 1?