Metzfab Industries LLC v. Individuals Corps Ltd

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Metzfab Industries, LLC and Brandon Metzger (Arizona)
  • Defendant: THE INDIVIDUALS, CORPORATIONS, LIMITED LIABILITY COMPANIES, PARTNERSHIPS, AND UNINCORPORATED ASSOCIATIONS IDENTIFIED ON SCHEDULE A (Principally People's Republic of China or other foreign jurisdictions)
  • Plaintiff’s Counsel: Boies Schiller Flexner LLP
• Case Identification: 1:24-cv-22191, S.D. Fla., 06/06/2024
• Venue Allegations: Venue is alleged to be proper because the defendants do not reside in the United States and may be sued in any judicial district, or alternatively, because they have allegedly committed acts of infringement and have a regular and established place of business in the district.
• Core Dispute: Plaintiffs allege that numerous foreign e-commerce merchants are selling automotive dipstick adapter assemblies that infringe two U.S. patents covering a method for replacing such adapters without removing the vehicle's oil pan.
• Technical Context: The technology relates to aftermarket automotive repair parts, specifically a device that simplifies the replacement of a vehicle's oil pan dipstick holder, a common and otherwise labor-intensive repair.
• Key Procedural History: The complaint is structured as a "Schedule A" action against a large number of unidentified defendants, a strategy often used to combat online infringement from foreign sellers. U.S. Patent No. 9,671,272 is a continuation of the application that resulted in U.S. Patent No. 9,285,259.

Case Timeline

Date	Event
2012-12-14	Earliest Priority Date for ’259 & ’272 Patents
2016-03-15	Issue Date of U.S. Patent No. 9,285,259
2017-06-06	Issue Date of U.S. Patent No. 9,671,272
2024-06-06	Complaint Filing Date

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 factory-installed dipstick adapters as "poorly designed" (ʹ272 Patent, col. 1:33-34). When these adapters fail, parts can fall into the oil pan, requiring removal of the pan and often the engine for repair, which is a "very time-consuming and expensive process" (ʹ272 Patent, col. 1:40-42).
• 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 outside the pan and a "clamping means" (or backing plate) that is inserted through the existing hole and positioned inside the pan (ʹ272 Patent, col. 2:50-65). Fasteners are then used to clamp the two pieces together from the outside, creating a seal around the hole (ʹ272 Patent, Fig. 4D).
• Technical Importance: The design purports to save "considerable time and expense" in vehicle maintenance by eliminating the need for major component disassembly to replace a common failure point (ʹ272 Patent, col. 2:35-36).

Key Claims at a Glance

• The complaint asserts independent Claim 1 (Compl. p. 11).
• Essential elements of Claim 1:
  • An assembly comprising: an oil pan, a front fixture, and clamping means coupled to the front fixture.
  • 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 relative to the fastener.
  • A second fastener applied to the front fixture to move the clamping means toward/away from the front fixture.
  • The clamping means is moveable through the oil pan hole to switch 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.
• The complaint alleges infringement of "one or more claims" of the patents-in-suit, reserving the right to assert other claims (Compl. ¶4).

U.S. Patent No. 9,285,259 - "Dipstick Adapter Assembly," Issued March 15, 2016

The Invention Explained

• Problem Addressed: As the parent patent, the ’259 Patent addresses the same technical problem: the difficulty and expense associated with replacing factory dipstick adapters that are prone to failure (ʹ259 Patent, col. 1:16-43).
• The Patented Solution: The solution is materially the same as in the ’272 Patent, describing an assembly with an external front fixture and an internal "clamping means" that can be installed through the oil pan hole (ʹ259 Patent, Abstract). The key inventive concept is the ability to install the replacement adapter without removing the oil pan from the vehicle (ʹ259 Patent, col. 2:25-33).
• Technical Importance: The invention provides a more efficient and less costly method for a common automotive repair (ʹ259 Patent, col. 2:31-33).

Key Claims at a Glance

• The complaint asserts independent Claim 1 (Compl. p. 12).
• Essential elements of Claim 1:
  • 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 larger than the hole and a width 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.
• The complaint reserves the right to assert claims beyond those explicitly charted (Compl. ¶4).

III. The Accused Instrumentality

Product Identification

• The accused instrumentalities are dipstick adapter assemblies sold by various online merchants, including products identified by Amazon Standard Identification Number (ASIN) B0CHJC86HG (sold by "DIYAREA") and B0CWH26DMD (sold by "Vvlsws") (Compl. pp. 11-12).

Functionality and Market Context

• The complaint alleges these products are "inferior imitations" of Plaintiffs' genuine products (Compl. ¶4). Based on images provided in the complaint, the accused products are multi-component kits designed to be installed in a vehicle's oil pan to create a sealed port for a dipstick (Compl. pp. 11-13). An image from an Amazon listing displays the accused product, an oil pan dipstick adapter, with text highlighting "DOUBLE SEALING RINGS" (Compl. p. 11). A marketing image for a second accused product shows its components and includes an inset diagram illustrating that when a bolt is rotated, an internal plate also rotates (Compl. p. 13). These products are allegedly sold through e-commerce platforms like Amazon and eBay to consumers in the U.S., placing them in direct competition with Plaintiffs' products (Compl. ¶¶3, 26).

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 coupled to the front fixture;	The accused product is shown as a multi-part assembly with an external fixture and an internal clamping plate.	¶49, p. 11	col. 8:35-41
a first fastener coupling the front fixture to the clamping means, the first fastener fixed to the clamping means with a bond to prevent rotation of the clamping means...	The product image shows a fastener connecting the external and internal components. The complaint does not provide specific evidence of a "bond."	¶49, p. 11	col. 8:62-67
a second fastener applied to the front fixture for application to the clamping means to move the clamping means toward and away from the front fixture;	The product image shows a second fastener that appears to function as a set screw or clamping bolt.	¶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, in which the clamping means is inside the oil pan;	The design of the components suggests the internal clamping means is intended to be passed through a hole in the oil pan for installation.	¶49, p. 11	col. 9:5-9
wherein in the applied condition... the front fixture encircles the hole in direct contact against the outer Surface of the oil pan and is sealed around the hole.	The accused product is shown with "DOUBLE SEALING RINGS," which are identified as gaskets meant to seal the assembly against the oil pan.	¶49, p. 11	col. 9:10-14

’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;	The accused product is shown with an external fixture that appears larger than the opening it is meant to cover.	¶49, p. 12	col. 8:41-43
clamping means coupled to the front fixture, 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; and	The internal plate (clamping means) appears to be oblong, consistent with a shape that could be inserted through a hole (width < hole) and then rotated to lock in place (length > hole). An included diagram suggests this rotational feature.	¶49, pp. 12-13	col. 8:44-48
the clamping means is moveable through the hole to arrange the assembly between a free condition... and an applied condition, in which the clamping means is inside the oil pan;	The design of the assembly, particularly the oblong shape of the internal plate, indicates it is intended to be passed through the oil pan hole during installation.	¶49, p. 13	col. 8:49-54
wherein in the applied condition... the front fixture encircles the hole in direct contact against the outer surface of the oil pan and is sealed around the hole.	The accused product is advertised with a "Double O-Ring For Seal," indicating its function is to seal against the oil pan surface.	¶49, p. 12	col. 8:55-59

Identified Points of Contention

• Scope Questions: A potential dispute for the '272 patent infringement allegation centers on the claim term "bond." The claim requires a "bond to prevent rotation" of the clamping means. The complaint's evidence does not explicitly show such a feature, raising the question of whether the accused product meets this specific structural limitation.
• Technical Questions: For the '259 patent, the infringement theory relies on the internal plate having a "length which is larger than the hole and a width... smaller than the hole." While marketing images suggest this functionality, the case may turn on what technical evidence is produced to prove these specific dimensional relationships and the resulting method of installation.

V. Key Claim Terms for Construction

Term 1 (’272 Patent, Claim 1): "a bond to prevent rotation"

• Context and Importance: This term is a critical limitation distinguishing Claim 1 of the '272 patent. Infringement will depend on whether the connection between the first fastener and the clamping means in the accused product constitutes a "bond" that prevents rotation. The absence of such a feature could be a basis for a non-infringement argument.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A party might argue that "bond" should be given its plain meaning, encompassing any method of fixing, including a high-friction fit, adhesive, or a keyed connection, that serves to prevent rotation.
  • Evidence for a Narrower Interpretation: The specification explicitly discloses the bond as a "small weld 100" and describes a process step of later "break[ing] the bond" to allow the fastener to rotate freely (ʹ272 Patent, col. 6:10-14, col. 7:43-48). This suggests the "bond" is a specific, physical, and breakable connection, potentially limiting the term's scope to a feature like a tack weld rather than a simple friction fit.

Term 2 (’259 Patent, Claim 1): "clamping means"

• Context and Importance: The definition of "clamping means" is central to the infringement analysis for the ’259 Patent. The claim requires this component to have specific dimensional properties relative to the oil pan hole (length > hole, width < hole). The construction of this term will determine whether the accused product's internal backing plate falls within the claim's scope.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification introduces this component as a "backing plate 11" which "is a clamping means" (ʹ259 Patent, col. 4:50-52). A plaintiff could argue that "clamping means" should be construed functionally to cover any internal component that performs the clamping function and possesses the recited dimensional characteristics.
  • Evidence for a Narrower Interpretation: The specification provides a detailed description of the preferred embodiment of the "backing plate," including "two wings 80 and 81," arcuate ends, and a specific "hold 90" (ʹ259 Patent, col. 4:36-col. 5:16). A defendant may argue that the term should be limited by these specific structural features disclosed in the patent's only described embodiment.

VI. Other Allegations

• Indirect Infringement: The complaint pleads indirect infringement (Compl. ¶57) and seeks to enjoin aiding and abetting (Compl. p. 15). The factual basis appears to rest on allegations that defendants provide the infringing products to U.S. consumers through e-commerce stores (Compl. ¶¶3, 13). Marketing materials that demonstrate how to use the product, such as the diagram showing the plate's rotation, could be argued to constitute instructions that induce infringing use (Compl. p. 13).
• Willful Infringement: Willfulness is alleged based on the assertion that defendants' infringement "has been and continues to be willful" (Compl. ¶59). The complaint does not allege any facts indicating pre-suit knowledge of the patents, such as a cease-and-desist letter. The claim may therefore rely on knowledge gained from the filing of the lawsuit itself.

VII. Analyst’s Conclusion: Key Questions for the Case

• A central issue will be one of structural proof: for the ’272 patent, can Plaintiffs prove that the accused products contain a "bond" that prevents rotation of the internal plate relative to its fastener, a specific feature taught in the patent but not immediately apparent from the complaint's visual evidence?
• A key evidentiary question will concern dimensional and operational correspondence: for the ’259 patent, does the accused product's internal plate actually possess the claimed dimensional properties (length greater than, and width less than, the target hole) that enable the patented method of installation, and how will this be proven beyond the marketing diagrams presented?
• A fundamental practical question will be one of enforcement: given that the defendants are a diffuse group of foreign entities identified on a sealed schedule, can Plaintiffs successfully establish personal jurisdiction, serve process, and ultimately enforce any judgment against these online sellers?