DCT
1:22-cv-06134
Hengste Se v. Luber Finer Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Hengst SE (Germany)
- Defendant: Luber-Finer, Inc. (Delaware)
- Plaintiff’s Counsel: Greer, Burns & Crain, Ltd.
- Case Identification: 1:22-cv-06134, N.D. Ill., 11/04/2022
- Venue Allegations: Plaintiff alleges venue is proper because Defendant has a regular and established place of business and has committed acts of infringement within the Northern District of Illinois.
- Core Dispute: Plaintiff alleges that Defendant’s automotive oil filter insert infringes a patent related to a mechanism for ensuring correct rotational alignment during installation.
- Technical Context: The technology concerns replaceable liquid filter inserts for internal combustion engines, focusing on mechanical features that prevent installation errors.
- Key Procedural History: The complaint does not mention any prior litigation, Inter Partes Review (IPR) proceedings, or licensing history related to the patent-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 2009-12-10 | U.S. Patent No. 9,023,203 Priority Date |
| 2015-05-05 | U.S. Patent No. 9,023,203 Issue Date |
| 2022-11-04 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,023,203 - “Liquid filter”
- Patent Identification: U.S. Patent No. 9,023,203, titled “Liquid filter,” issued May 5, 2015 (the “’203 Patent”).
The Invention Explained
- Problem Addressed: The patent addresses the problem of incorrectly installing replaceable filter inserts into a filter housing, which can prevent the proper sealing of an outlet used to drain the housing during filter changes (U.S. Patent No. 9,023,203, col. 1:43-48). Prior art solutions that guide the filter into the correct rotational position were often located on the bottom of the filter housing, consuming valuable space and limiting the design of other components (U.S. Patent No. 9,023,203, col. 1:58-65).
- The Patented Solution: The invention proposes a self-guiding mechanism using interacting positioning elements on the side circumferences of the filter insert and the housing. Specifically, an "inclined plane" on one component engages a "protruding nose" on the other. As the filter insert is placed into the housing, the sliding interaction between the nose and the plane causes the insert to rotate automatically into the correct alignment, ensuring a blocking element on the insert properly engages the housing's outlet (U.S. Patent No. 9,023,203, col. 2:30-51, Abstract). This design frees up space on the bottom of the filter housing for other functional elements.
- Technical Importance: This approach provides a "reliable automatic engagement-compatible positioning" of the filter insert in a "space-saving construction," reducing the risk of human error during installation (U.S. Patent No. 9,023,203, col. 2:24-29).
Key Claims at a Glance
- The complaint asserts independent claim 15 of the ’203 Patent.
- The essential elements of independent claim 15 include:
- A ring filter insert with a hollow-cylindrical filter body and top/bottom panels.
- An eccentric blocking element on the bottom panel to engage an opening in a filter housing.
- A "first positioning means" on the ring filter insert that interacts with a "second positioning means" on the filter housing to bring the blocking element into engagement with the opening.
- The first positioning means is either an "inclined plane" or a "protruding nose," and the second positioning means is the other of the two.
- The inclined plane and nose are arranged to slide along each other, causing the filter insert to rotate relative to the housing.
- The first positioning means is arranged on an inner circumference of the ring filter insert.
- The complaint reserves the right to assert "one or more claims, including at least claim 15" (Compl. ¶19).
III. The Accused Instrumentality
Product Identification
- The accused product is the Luber-Finer filter insert with part identification number LP6044 (Compl. ¶12). A screenshot from the defendant's website shows the filter insert configuration with this part number (Compl., Ex. B).
Functionality and Market Context
- The LP6044 is described as an "automotive oil filter insert" (Compl. ¶5). The complaint alleges it possesses a hollow-cylindrical body, top and bottom panels, an eccentric blocking element, and a "protruding nose" on its inner circumference that functions as a positioning means (Compl. ¶¶22, 23, 25, 27). A photograph of the accused LP6044 filter insert is provided, showing its general shape and features (Compl., Ex. C). The complaint does not provide detail on the product's market position beyond its sale by the Defendant.
IV. Analysis of Infringement Allegations
'203 Patent Infringement Allegations
| Claim Element (from Independent Claim 15) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a hollow-cylindrical filter material body surrounded on front sides by top and bottom front panels and which can be replaceably arranged in a filter housing, | The LP6044 filter insert has a hollow-cylindrical filter material body surrounded by top and bottom front panels and is designed to be replaceably arranged in a filter housing. | ¶22 | col. 5:49-52 |
| an eccentric blocking element arranged on the bottom front panel for engaging an eccentric opening in the filter housing, | The LP6044 filter insert has an eccentric blocking element on its bottom front panel that engages an eccentric opening in a filter housing. | ¶23 | col. 5:63-65 |
| first positioning means on the ring filter insert, which interact with second positioning means on the filter housing...and which are arranged to bring the blocking element into engagement with the eccentric opening, | The LP6044 filter insert includes a first positioning means that interacts with a second positioning means on a filter housing to bring the blocking element into engagement with the eccentric opening. | ¶24 | col. 7:7-14 |
| the first positioning means being one of an inclined plane and a protruding nose, with the second positioning means being the other of the inclined plane and the protruding nose, | The first positioning means on the LP6044 filter insert is a "protruding nose," which can engage an "inclined plane of the filter housing." | ¶25 | col. 7:10-14 |
| the inclined plane and the nose arranged to be moved in relation to each other in such a way that they slide along each other and bring the blocking element into engagement with the eccentric opening, by rotating the ring filter insert... | The protruding nose on the LP6044 filter insert is configured to slide along the inclined plane of the filter housing, causing rotation of the insert to bring the blocking element into engagement. | ¶26 | col. 7:15-21 |
| the first positioning means being one of embodied and arranged on an inner circumference of the ring filter insert. | The protruding nose on the LP6044 filter insert is embodied and arranged on an inner circumference of the insert. | ¶27 | col. 7:10-12 |
Identified Points of Contention
- Scope Questions: The complaint alleges the accused insert has a "protruding nose" (first positioning means) and the housing has an "inclined plane" (second positioning means) (Compl. ¶25). A central dispute may be whether the structure on the accused insert qualifies as a "protruding nose" and whether the corresponding feature in the filter housings it is designed for qualifies as an "inclined plane" within the meaning of the patent.
- Technical Questions: What evidence demonstrates that the accused insert's "protruding nose" actually "slide[s] along" the "inclined plane" in a standard housing to cause rotation and engagement, as required by the claim? (Compl. ¶26). The complaint provides static images, but the claimed functionality is dynamic, raising a potential evidentiary question about the actual interaction between the components during installation.
V. Key Claim Terms for Construction
- The Term: "positioning means"
- Context and Importance: This term is the core of the invention. The infringement case hinges on whether the accused product's alignment features meet the definition of the "first positioning means" and "second positioning means." While the claim provides some structure ("inclined plane" and "protruding nose"), practitioners may focus on this term to dispute whether it should be construed under 35 U.S.C. § 112(f) (means-plus-function) and, if not, what the scope of the structural terms "inclined plane" and "protruding nose" is.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes multiple arrangements, such as the nose being on the filter insert and the plane on the housing, or vice versa (U.S. Patent No. 9,023,203, col. 2:38-45). This flexibility could support a construction that is not limited to a single embodiment.
- Evidence for a Narrower Interpretation: A party could argue the terms should be limited to structures consistent with the specific embodiments shown, such as an inclined plane having an "incline, which excludes a self-locking" characteristic (U.S. Patent No. 9,023,203, col. 3:30-31) or a plane that merges into an "axial guide" (U.S. Patent No. 9,023,203, col. 4:41-43).
VI. Other Allegations
- Indirect Infringement: The complaint does not contain a count for indirect infringement or allege specific facts to support the elements of inducement or contributory infringement. The prayer for relief includes a boilerplate request to enjoin aiding and abetting (Compl. p. 7, ¶5c).
- Willful Infringement: The complaint alleges that Luber-Finer "was aware of the ‘203 Patent before the filing of the present Complaint" (Compl. ¶30). This allegation is made "on information and belief" and is not supported by specific factual assertions detailing when or how such knowledge was acquired.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim construction: how will the court define the scope of the key structural limitations "protruding nose" and "inclined plane"? The case will likely depend on whether the physical features of the accused LP6044 insert and the standard filter housings it fits into fall within the patent's definition of these terms.
- A key evidentiary question will be one of operative function: beyond the mere presence of the structures, does the accused product's "protruding nose" actually cooperate with an "inclined plane" in a filter housing to perform the claimed function of causing rotation and bringing the blocking element into alignment? The plaintiff will need to provide evidence demonstrating this dynamic interaction.