DCT

1:19-cv-02460

MacNeil Automotive Products Ltd v. Jinrong SH Automotive Accessory Development Co Ltd

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:19-cv-02460, N.D. Ill., 01/10/2020
  • Venue Allegations: Plaintiff alleges jurisdiction is proper in the district based on Defendants' transaction of business, including offering for sale and selling the accused products to customers in Illinois, thereby placing the products into the stream of commerce with the knowledge they would be sold in the district.
  • Core Dispute: Plaintiff alleges that Defendant’s line of vehicle floor trays infringes two U.S. patents related to the design and precision-fit manufacturing of such trays.
  • Technical Context: The technology concerns custom-molded, three-dimensional vehicle floor trays designed to precisely conform to a specific vehicle’s footwell to provide enhanced protection and fluid containment.
  • Key Procedural History: The complaint is a First Amended Complaint, superseding an original complaint. It alleges that Defendant Jinrong was aware of MacNeil's patents because a principal of Jinrong cited a related MacNeil patent as prior art in a Chinese utility model application. Subsequent to the complaint's filing, Inter Partes Review (IPR) proceedings were concluded for both asserted patents. In IPR2020-01139, all claims (1-7) of the '186 Patent were cancelled. In IPR2020-01142, claims 1-12 of the '834 Patent were found patentable, while claims 13-15 were cancelled.

Case Timeline

Date Event
2004-10-29 Priority Date for '186 and '834 Patents
2005-01-01 Plaintiff begins selling its floor trays (approx.)
2013-02-26 U.S. Patent No. 8,382,186 Issued
2014-09-16 U.S. Patent No. 8,833,834 Issued
2016-01-01 Earliest model year of accused products (approx.)
2020-01-10 First Amended Complaint Filed
2024-02-06 IPR Certificate Issued for '186 Patent (Claims Cancelled)
2024-02-08 IPR Certificate Issued for '834 Patent (Claims Confirmed/Cancelled)

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 8,382,186 - Vehicle Floor Tray

  • Patent Identification: U.S. Patent No. 8,382,186 (“the ’186 Patent”), Vehicle Floor Tray, issued February 26, 2013.

The Invention Explained

  • Problem Addressed: The patent’s background section describes the problem of conventional vehicle floor mats and trays having a poor fit within the complex three-dimensional surfaces of a vehicle footwell, which causes them to "rattle, deform, shift and flop about" (’186 Patent, col. 2:3-4). It also notes that fluid reservoirs in existing mats often fail to prevent collected liquid from "sloshing about in a moving vehicle" (’186 Patent, col. 2:31-32).
  • The Patented Solution: The invention is a vehicle floor tray thermoformed from a polymer sheet, featuring a central panel with upstanding side panels for a precise fit (’186 Patent, col. 5:9-17). The core of the solution is a reservoir in the central panel containing "plural, hollow, elongate baffles" which are designed to elevate an occupant's foot above collected liquid and, through their specific arrangement, "impede lateral movement" of that fluid during vehicle motion (’186 Patent, Abstract; col. 7:7-24).
  • Technical Importance: The invention sought to provide a more stable, better-fitting floor tray with superior fluid containment compared to prior art mats.

Key Claims at a Glance

  • The complaint asserts infringement of at least one claim of the patent (Compl. ¶19). Independent Claim 1 is representative and includes the following essential elements:
    • A vehicle floor tray thermoformed from a sheet of thermoplastic polymeric material of substantially uniform thickness.
    • A central panel substantially conforming to a vehicle footwell floor.
    • First and second upwardly extending panels integrally formed with the central panel.
    • A reservoir disposed in the central panel.
    • A plurality of upstanding, hollow, elongate baffles disposed in the reservoir, with a width more than twice their thickness, adapted to elevate a foot and impede fluid movement.
  • The complaint does not specify which claims are asserted but reserves the right to identify them later.

U.S. Patent No. 8,833,834 - Molded Vehicle Floor Tray and System

  • Patent Identification: U.S. Patent No. 8,833,834 (“the ’834 Patent”), Molded Vehicle Floor Tray and System, issued September 16, 2014.

The Invention Explained

  • Problem Addressed: Similar to the ’186 Patent, the background identifies the "loose fit inside the foot well" of conventional floor trays and the resulting consumer dissatisfaction (’834 Patent, col. 2:6-7).
  • The Patented Solution: This patent claims a system comprising both the vehicle foot well and a molded floor tray designed to fit within it with a high degree of precision (’834 Patent, col. 20:4-23). The invention focuses on the close conformance between the tray’s upstanding walls and the corresponding footwell walls, specifying that a large percentage of the tray’s outer surface must be within a very small distance (e.g., one-eighth of an inch) of the footwell surface (’834 Patent, Abstract). This precise fit is achieved via a manufacturing process that begins with digitally capturing the footwell's geometry with a coordinate measuring machine (CMM) (’834 Patent, col. 17:29-41).
  • Technical Importance: The patented system provides a floor tray that is effectively "locked" in place by its extremely close conformance to the vehicle's own structure, enhancing stability and protection.

Key Claims at a Glance

  • The complaint asserts that specific SKUs infringe at least claims 1, 5, and 9 (Compl. ¶27). Independent Claim 1 is a system claim with the following essential elements:
    • A vehicle foot well with a floor and at least first, second, and third upstanding foot well walls.
    • A vehicle floor tray molded from a sheet of polymeric material of substantially uniform thickness.
    • The tray includes a central panel and first, second, and third tray walls that substantially conform to the respective foot well walls.
    • A specific dimensional tolerance: at least 90 percent of the outer surface of the top one-third of the tray walls must be "within one-eighth of an inch of the respective foot well walls."
  • The complaint also asserts dependent claims 5 (which adds a top margin coplanarity requirement) and 9 (which defines a system with dimensional tolerances for 50% of the tray walls).

III. The Accused Instrumentality

Product Identification

  • The accused products are a line of vehicle floor trays manufactured by Defendant Jinrong and sold in the United States, referred to as the "Infringing Products" (Compl. ¶3). These products are marketed under various brand names, including "Perfit" and "CoolShark" (Compl. ¶13). The complaint specifically identifies accused SKUs for the 2016 Honda Accord, Honda CRV, 2019 Ford Escape, 2019 Ford Fusion, and Jeep Wrangler (Compl. ¶27).

Functionality and Market Context

  • The complaint alleges the accused products are vehicle floor trays designed and directed to popular vehicles in the United States (Compl. ¶13). The complaint describes Plaintiff's products as being "digitally measured for precise fit," implying the accused products are copies that possess similar characteristics (Compl. ¶7). Plaintiff references an exhibit containing a sample of Jinrong's Alibaba.com listings, which allegedly solicit U.S. distributors for the Infringing Products (Compl. ¶12, Ex. 3). Plaintiff also references an exhibit showing that Defendant Rui Dai distributes the products under the "CoolShark" brand (Compl. ¶14, Ex. 4). The complaint alleges these products are sold nationwide, including substantial sales into the Northern District of Illinois (Compl. ¶3).

IV. Analysis of Infringement Allegations

The complaint provides a notice pleading of infringement without detailed factual allegations or claim charts mapping accused product features to specific claim limitations.

’186 Patent Infringement Allegations

The complaint alleges that Defendants’ Infringing Products directly and/or indirectly infringe at least one claim of the ’186 Patent (Compl. ¶19). The narrative theory is that the accused floor trays are copies of Plaintiff's patented design, incorporating features like a fluid reservoir with baffles. However, the complaint does not provide sufficient detail for a claim-element-by-element analysis.

  • Identified Points of Contention:
    • Scope Questions: A central question would concern the scope of claim terms like "reservoir" and "hollow, elongate baffles." The dispute would focus on whether the structures in the accused products for containing fluid and providing tread meet the specific definitions and structural requirements of the claims.
    • Post-Filing Development: The subsequent cancellation of all claims of the ’186 Patent in an IPR proceeding (IPR2020-01139) renders the infringement analysis for this patent moot, pending any further appeal.

’834 Patent Infringement Allegations

The complaint alleges that certain SKUs of the accused products indirectly infringe at least claims 1, 5, and 9 of the ’834 Patent (Compl. ¶27). The infringement theory is that the accused trays are manufactured to have a precise, conforming fit within the footwells of specific vehicle models, thereby creating the claimed "system" when installed by a consumer (Compl. ¶26). The complaint does not provide sufficient detail for a claim-element-by-element analysis.

  • Identified Points of Contention:
    • Evidentiary Questions: The system claims of the ’834 Patent require proof of specific dimensional conformance (e.g., "within one-eighth of an inch"). A key issue will be whether Plaintiff can produce evidence, such as 3D laser scans of the accused products as installed in the specified vehicles, to demonstrate that these precise numerical limitations are met.
    • Technical Questions: A potential dispute may arise over whether the accused products are in fact manufactured using a digital-to-physical process capable of achieving the claimed tolerances or if their fit is merely incidental.

V. Key Claim Terms for Construction

The Term: "hollow, elongate baffles" (’186 Patent, Claim 1)

Context and Importance

  • This term is a central feature of the ’186 Patent's claimed solution for fluid containment. The definition of "hollow" will be critical, as it distinguishes the claimed thermoformed structure from a solid, molded block. Practitioners may focus on whether the term implies a specific manufacturing process (thermoforming) or merely a resulting structure that is not solid.

Intrinsic Evidence for Interpretation

  • Evidence for a Broader Interpretation: The Abstract describes the tray as "thermoformed," which inherently creates raised features that are "hollow" underneath. The term could be construed to cover any raised, non-solid tread structure that impedes fluid motion.
  • Evidence for a Narrower Interpretation: The figures show a specific pattern of interconnected baffles (’186 Patent, Fig. 1). A defendant could argue that "baffles" must be read in light of these embodiments to require a structure that actively compartmentalizes the reservoir, not just any raised tread.

The Term: "a vehicle foot well" and the associated conformance limitation "within one-eighth of an inch of the respective foot well walls" (’834 Patent, Claim 1)

Context and Importance

  • This system claim requires defining the boundaries of the "vehicle foot well" and then measuring the conformance of the accused tray to it. The entire infringement case for the ’834 Patent hinges on whether the accused tray, when placed in the specified vehicle, meets this precise, quantitative limitation.

Intrinsic Evidence for Interpretation

  • Evidence for a Broader Interpretation: The specification describes a process for achieving this fit using CMM data, suggesting the invention is the application of this high-precision method to any footwell, not just the specific one pictured (’834 Patent, col. 17:29-60).
  • Evidence for a Narrower Interpretation: The term "vehicle foot well" is an element of the claim. A defendant might argue that variations in vehicle manufacturing or the state of the vehicle's carpeting (e.g., new vs. compressed) could alter the "foot well" dimensions, making the infringement analysis inconsistent and raising questions of indefiniteness. The patent itself shows detailed measurements for a specific footwell, which could be argued to limit the claim's scope (’834 Patent, Figs. 9-14).

VI. Other Allegations

Indirect Infringement

  • For the ’186 Patent, the complaint alleges inducement by making, importing, and selling the products (Compl. ¶20).
  • For the ’834 Patent, the complaint alleges both contributory infringement (the products are "especially made or specially adapted" for infringing use and are not staple articles) and inducement, supported by the allegation that consumers directly infringe by installing the products in the specified vehicles (Compl. ¶¶25-27).

Willful Infringement

  • The complaint alleges that infringement of both patents has been and continues to be willful and deliberate (Compl. ¶¶22, 29). This allegation is primarily supported by the assertion that "a principal of Jinrong cited at least one related MacNeil US patent as prior art in a Chinese utility model application," suggesting pre-suit knowledge of Plaintiff’s patent portfolio (Compl. ¶17).

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

Given the subsequent cancellation of all claims of the ’186 patent, the viability of the litigation appears to rest entirely on the ’834 patent. The central questions for the case will likely be:

  • A key evidentiary question will be one of quantitative proof: Can Plaintiff produce the detailed, rigorous evidence (e.g., 3D scans) required to prove that the accused floor trays, when installed in the specified vehicles, meet the precise numerical conformance limitations ("within one-eighth of an inch") recited in the system claims of the ’834 Patent?
  • A central issue will be one of intent: Does the allegation that Defendant Jinrong cited a related MacNeil patent in its own Chinese patent filing constitute the kind of "egregious" conduct that could support a finding of willful infringement and lead to enhanced damages, especially now that the validity of the asserted ’834 Patent claims has been confirmed in an IPR?
  • A foundational legal question, though now largely resolved by the IPR, was one of validity: The ’834 Patent's survival of an IPR challenge significantly strengthens its presumption of validity, shifting the focus of the case from validity disputes to the factual questions of infringement and willfulness.