DCT
1:23-cv-23867
Metzfab Industries LLC v. T Schedule A
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Metzfab Industries, LLC (Arizona) and Brandon Metzger (Arizona)
- Defendant: The Individuals, Corporations, Limited Liability Companies, Partnerships, and Unincorporated Associations Identified on Schedule A
- Plaintiff’s Counsel: Boies Schiller Flexner LLP
- Case Identification: 1:23-cv-23867, S.D. Fla., 10/10/2023
- Venue Allegations: Venue is alleged to be proper because Defendants have committed acts of patent infringement, conduct substantial business, have registered agents, or reside or may be found in the district.
- Core Dispute: Plaintiffs allege that Defendants’ e-commerce stores sell dipstick adapter assemblies that infringe patents related to a method for repairing vehicle oil pans without removing them.
- Technical Context: The technology addresses the automotive repair market, offering a product that simplifies a typically time-consuming and expensive repair of a leaking oil pan dipstick adapter.
- Key Procedural History: The complaint is filed against a broad group of unnamed e-commerce operators identified on a sealed "Schedule A," a common strategy in cases targeting online sellers who allegedly use fictitious identities and operate through various marketplace platforms.
Case Timeline
| Date | Event |
|---|---|
| 2011 | Metzfab Industries, LLC business started |
| 2012-12-14 | Priority date for U.S. Patent Nos. 9,285,259 and 9,671,272 |
| 2016-03-15 | U.S. Patent No. 9,285,259 issued |
| 2017-06-06 | U.S. Patent No. 9,671,272 issued |
| 2023-10-10 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,671,272 - “Dipstick Adapter Assembly,” issued June 6, 2017
The Invention Explained
- Problem Addressed: The patent’s background describes the problem of factory-installed dipstick adapters wearing out, which can cause parts to fall into a vehicle's oil pan. Repairing this typically requires removing the oil pan, an expensive and "very time-consuming" process that may even necessitate removing the engine (’272 Patent, col. 1:20-34).
- The Patented Solution: The invention is a multi-part adapter assembly that can be installed without removing the oil pan. It consists of a "front fixture" that sits on the outside of the oil pan and a "clamping means" (a backing plate) that is inserted through the hole and positioned on the inside. Fasteners are then adjusted from the outside to clamp the two pieces together, compressing gaskets to create a seal around the hole (’272 Patent, Abstract; col. 2:50-65).
- Technical Importance: The invention provides a practical method to avoid a costly and labor-intensive automotive repair by enabling the fix to be performed entirely from the exterior of the oil pan (’272 Patent, col. 2:30-35).
Key Claims at a Glance
- The complaint asserts independent Claim 1 (Compl. p. 11).
- Essential elements of Claim 1 include:
- An assembly comprising: an oil pan, a front fixture, and clamping means.
- A first fastener coupling the front fixture to the clamping means.
- The first fastener is "fixed to the clamping means with a bond to prevent rotation of the clamping means with respect to the first fastener."
- A second fastener is applied to move the clamping means toward and away from the front fixture.
- The clamping means is moveable through the hole from a "free condition" (outside the pan) to an "applied condition" (inside the pan).
- In the applied condition, the front fixture encircles the hole and is sealed against the outer surface.
- The complaint does not explicitly reserve the right to assert dependent claims but references infringement of "one or more claims" generally (Compl. ¶4, ¶55).
U.S. Patent No. 9,285,259 - “Dipstick Adapter Assembly,” issued March 15, 2016
The Invention Explained
- Problem Addressed: The patent identifies the same problem as its continuation, the ’272 Patent: the significant time and expense required to replace a worn factory dipstick adapter by removing the oil pan (’259 Patent, col. 1:20-34).
- The Patented Solution: The invention is an adapter assembly that allows for external installation. A "clamping means" is designed with a width smaller than the hole and a length larger than the hole, allowing it to be inserted through the opening and then turned to provide an internal anchor. This clamping means is then drawn tight against a "front fixture" on the outside, sealing the hole (’259 Patent, col. 2:42-56).
- Technical Importance: This design provides a specific geometric solution that enables a backing plate to be manipulated into place through the very hole it is intended to seal, circumventing the need for internal access to the oil pan (’259 Patent, col. 6:8-15).
Key Claims at a Glance
- The complaint asserts independent Claim 1 (Compl. p. 12).
- Essential elements of Claim 1 include:
- An assembly comprising: an oil pan, a front fixture larger than the hole, and clamping means coupled to the front fixture.
- The clamping means has "a length which is larger than the hole and a width, transverse to the length, which is a smaller than the hole."
- The clamping means is moveable through the hole to arrange the assembly between a free condition (outside the pan) and an applied condition (inside the pan).
- In the applied condition, the front fixture encircles and seals the hole on the outer surface of the oil pan.
- The complaint does not explicitly reserve the right to assert dependent claims but makes general allegations (Compl. ¶4, ¶55).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are "Infringing Products," specifically dipstick adapter repair kits sold through "Defendant Internet Stores" on platforms including Amazon, Alibaba, and eBay (Compl. ¶1, ¶3, ¶30). The complaint identifies two specific examples by their Amazon Standard Identification Numbers (ASINs): B0BY91BVSY and B0C1YK4RKG (Compl. pp. 11-12).
Functionality and Market Context
- The products are presented as solutions for leaking oil pan adapters (Compl. p. 12, 13). Product marketing images state, "It can be quickly installed without removing the oil pan or engine of your vehicle" and "No need to disassemble the oil pan and engine, solving the oil pan leakage problem" (Compl. p. 12, 13). The complaint alleges these are "inferior imitations" sold in a manner designed to appear as authorized products, thereby trading on Plaintiffs' reputation (Compl. ¶4). The complaint provides an image showing the components of an accused product, including a main fixture, a backing plate, and O-rings for sealing (Compl. p. 11).
IV. Analysis of Infringement Allegations
’272 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An assembly comprising: an oil pan... a front fixture; clamping means... | The accused product is an assembly including a front fixture and a backing plate (clamping means) intended for use with an oil pan. The complaint provides an image of the components (Compl. p. 11). | ¶49, p. 11 | col. 7:48-52 |
| a first fastener coupling the front fixture to the clamping means... | The provided product image shows fasteners that appear designed to couple the front fixture and clamping means. | ¶49, p. 11 | col. 8:61-63 |
| the first fastener fixed to the clamping means with a bond to prevent rotation of the clamping means... | The complaint does not provide specific evidence of a "bond," but alleges infringement of the full claim. The product image shows a fastener head that may be fixed to the backing plate. | ¶49, p. 11 | col. 8:63-65 |
| a second fastener applied... to move the clamping means toward and away from the front fixture... | The product image shows a second fastener hole, implying the use of a second fastener to tighten the assembly. | ¶49, p. 11 | col. 9:1-4 |
| the clamping means is moveable through the hole to arrange the assembly between a free condition... and an applied condition... | The product is marketed with text stating it can be installed without removing the oil pan, which necessitates the clamping means moving through the hole. | ¶49, p. 12 | col. 9:4-9 |
| the front fixture encircles the hole in direct contact against the outer surface of the oil pan and is sealed around the hole. | The "Double O-ring Seals" shown in the product image are alleged to create a seal around the hole when the front fixture is tightened against the oil pan's outer surface (Compl. p. 11). | ¶49, p. 11 | col. 9:10-13 |
’259 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An assembly comprising: an oil pan... a front fixture larger than the hole; clamping means... | The accused product is an assembly with a front fixture and a backing plate (clamping means). The complaint includes an image of the assembled product on an oil pan (Compl. p. 13). | ¶49, p. 12 | col. 8:41-44 |
| the clamping means having a length which is larger than the hole and a width, transverse to the length, which is a smaller than the hole... | The complaint does not provide dimensional analysis, but the product's function, as described in marketing text ("No need to disassemble the oil pan"), suggests the clamping means must be shaped to pass through the hole and then rotate to anchor, consistent with this limitation (Compl. p. 13). | ¶49, p. 12-13 | col. 8:45-49 |
| the clamping means is moveable through the hole to arrange the assembly between a free condition... and an applied condition... | The product marketing explicitly describes a function that requires the clamping means to be moved through the hole from an external position to an internal, applied one. An image depicts installation in progress (Compl. p. 13). | ¶49, p. 13 | col. 8:50-54 |
| the front fixture encircles the hole in direct contact against the outer surface of the oil pan and is sealed around the hole. | An image in the complaint shows the accused product installed on an oil pan, with the front fixture encircling the repair area (Compl. p. 12). Another image shows a hand tightening the assembly, implying it is sealed against the outer surface (Compl. p. 13). | ¶49, p. 12-13 | col. 8:55-58 |
Identified Points of Contention
- Technical Questions: A primary question for the ’272 Patent will be evidentiary: what evidence demonstrates that the accused product’s first fastener is "fixed... with a bond to prevent rotation"? The complaint relies on images that do not explicitly show such a bond. For the ’259 Patent, a key technical question is whether the accused "clamping means" actually has the specific geometry recited in Claim 1 (length > hole diameter; width < hole diameter). The complaint's allegations are functional rather than dimensional.
- Scope Questions: The case may raise the question of whether the term "clamping means" should be limited to the specific "backing plate" with wings disclosed in the specification (’259 Patent, col. 4:36-39, Fig. 3A-3E) or if it can be construed more broadly to cover any internal anchor that performs the claimed function.
V. Key Claim Terms for Construction
Term 1: "bond" (’272 Patent, Claim 1)
- Context and Importance: This term is critical because it defines a key structural feature differentiating the ’272 Patent's claims. The "bond" prevents the internal clamping means from rotating when the external fasteners are tightened. The presence or absence of this specific feature in the accused products will be a central point of the infringement analysis.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term "bond" is not explicitly defined. A party could argue it should be given its plain and ordinary meaning, encompassing any method of attachment, including friction fitting, adhesives, or mechanical interlocks, that serves to "prevent rotation."
- Evidence for a Narrower Interpretation: The specification provides a single, specific example of the bond: "an end 96 of the bolt 94 has a small weld 100 to the outer face 61 of the backing plate 11" (’272 Patent, col. 6:10-12). A party could argue that this disclosure limits the scope of "bond" to a permanent, physical connection like a weld, particularly because the patent later describes the "weld 100" breaking free during installation (’272 Patent, col. 7:44-48).
Term 2: "clamping means" (’272 Patent, Claim 1; ’259 Patent, Claim 1)
- Context and Importance: This term is the central element of the invention, representing the internal anchor. Its construction will determine what range of internal anchoring mechanisms falls within the scope of the patents. Practitioners may focus on this term because it is a functional descriptor whose structural requirements are detailed in the specification.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself is functional, reciting a "clamping means." A plaintiff might argue this term covers any structure that performs the function of clamping from inside the oil pan, as coupled to the front fixture.
- Evidence for a Narrower Interpretation: The specification consistently refers to the "clamping means" as a "backing plate 11" (’259 Patent, col. 4:51-52). The detailed description and figures disclose a very specific structure for this backing plate, including a body, arcuate ends, and two "wings 80 and 81" that are "identical and oppositely arranged" (’259 Patent, col. 4:36-41; Figs. 3A-3E). A defendant could argue these detailed descriptions limit the scope of "clamping means" to the specific backing plate structure disclosed, and not other potential anchoring designs.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both direct and indirect infringement (Compl. ¶57). The factual basis for inducement may be inferred from allegations that Defendants provide products with marketing materials and instructions that guide consumers to use them in an infringing manner. For example, product listings include text such as "Easy to Install" and "No need to disassemble the oil pan" (Compl. pp. 12-13), which allegedly directs the end-user to perform the patented method.
- Willful Infringement: The complaint alleges that Defendants' infringement "has been and continues to be willful" (Compl. ¶59). The basis for this allegation appears to be the alleged nature of Defendants' business model, which includes using fictitious names, concealing identities, and selling "inferior imitations" designed to look like genuine products (Compl. ¶4, ¶32, ¶37). The complaint does not allege specific pre-suit knowledge via a notice letter or other communication.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of evidentiary proof: can Plaintiffs produce technical evidence, beyond the marketing images in the complaint, demonstrating that the anonymously-sourced accused products meet every specific limitation of the asserted claims? This is particularly relevant for the "bond to prevent rotation" in the '272 patent, a technical detail not readily apparent from product photos.
- The case will likely turn on a question of claim scope: will the term "clamping means" be construed broadly to cover any internal anchor, or will it be limited by the specification's detailed disclosure to the specific "backing plate" with opposing wings? Similarly, will the term "bond" be limited to the "weld" disclosed as the sole embodiment, or can it encompass other forms of non-rotational fixing?
- A third key question will be procedural and practical: given that the defendants are numerous, allegedly foreign-based e-commerce entities operating under aliases, a central challenge for the Plaintiffs will be identifying the proper parties, effecting service, and ultimately enforcing any judgment that may be obtained.