MacNeil IP LLC v. Harbor Freight Tools USA Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Weathertech Direct, LLC and MacNeil IP LLC (Illinois)
  • Defendant: Harbor Freight Tools USA, Inc. (Delaware)
  • Plaintiff’s Counsel: Daspin & Aument, LLP
• Case Identification: 1:24-cv-03767, N.D. Ill., 05/08/2024
• Venue Allegations: Plaintiff alleges venue is proper because Defendant has committed acts of patent infringement in the district and maintains regular and established places of business there.
• Core Dispute: Plaintiff alleges that Defendant’s HaulMaster Hitch Mount Bumper Step infringes four U.S. patents related to the design and construction of injection-molded polymer trailer hitch steps.
• Technical Context: The technology concerns automotive accessories, specifically trailer hitch steps designed not only for user access but also to absorb energy in low-speed rear collisions.
• Key Procedural History: The complaint alleges Defendant had knowledge of the patents-in-suit as a result of Plaintiff’s marking its own products in compliance with 35 U.S.C. § 287(a).

Case Timeline

Date	Event
2013-07-29	Earliest Priority Date for '364, '495, '796, and '035 Patents
2014-05-20	U.S. Patent No. 8,727,364 Issued
2014-10-07	U.S. Patent No. 8,851,495 Issued
2014-12-30	U.S. Patent No. 8,919,796 Issued
2015-09-29	U.S. Patent No. 9,145,035 Issued
2024-05-08	Complaint Filing Date

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

U.S. Patent No. 8,727,364 - “Injection-Molded Plastic Hitch Step”

Issued May 20, 2014

The Invention Explained

• Problem Addressed: The patent identifies a need for a trailer hitch step that can absorb force from a rear-end collision, noting that prior art metal steps are heavy and have a limited ability to absorb, rather than transmit, impact forces to the vehicle frame (ʼ364 Patent, col. 1:22-34).
• The Patented Solution: The invention is a hitch step integrally injection-molded from a thermoplastic polymer compound, featuring a hollow step body with specific internal reinforcing structures. These structures include transverse members and, critically, "oblique cross members" that are "adapted to collapse in a forward direction upon impact," thereby absorbing energy ('364 Patent, Abstract; col. 5:37-55; Fig. 2). This design allows the step to be strong enough for normal use but also function as a sacrificial, energy-absorbing component in a collision.
• Technical Importance: The design provides a lightweight alternative to metal hitch steps that combines the primary function of a step with the secondary safety benefit of an energy-absorbing bumper element ('364 Patent, col. 1:22-26).

Key Claims at a Glance

• The complaint asserts dependent Claim 6, which relies on independent Claim 1 (Compl. ¶¶ 20-21).
• The essential elements of independent Claim 1 include:
  • A collapsible hitch step with a step body having a rear panel, side panels, and a top panel.
  • At least one transverse member inside the step body, positioned forward of the rear panel.
  • A plurality of "oblique cross members" extending from the interior of the rear panel to the rear surface of the transverse member.
  • The oblique cross members are "adapted to collapse in a forward direction upon impact," thereby absorbing force.

U.S. Patent No. 8,851,495 - “Integrally Molded Polymer Hitch Step”

Issued October 7, 2014

The Invention Explained

• Problem Addressed: The patent addresses the challenge of creating a polymer hitch step that is strong enough to withstand the "weight of an adult at an off-axis position without unacceptable torsional or cantilever deformation," a key requirement for commercial viability ('495 Patent, col. 1:31-35).
• The Patented Solution: The invention is an integrally molded hitch step having a hollow body and a hollow tongue, with a particular focus on the "throat region" connecting the two. The solution involves a plurality of "vertically disposed reinforcing plates" within this throat region that are specifically arranged to divide the volume into "substantially triangularly prismatic cells." This geometry is designed to resist torque around the longitudinal axis when a user steps on the platform away from the center ('495 Patent, Abstract; col. 2:15-21).
• Technical Importance: This design focuses on optimizing the geometry of the critical throat junction to achieve high torsional rigidity for user safety, while still using a lightweight, single-piece molded polymer construction that can absorb impact energy ('495 Patent, col. 2:18-21).

Key Claims at a Glance

• The complaint asserts independent Claim 1 (Compl. ¶¶ 25-26).
• The essential elements of independent Claim 1 include:
  • A hitch step with a "substantially hollow step body" and a "substantially hollow tongue" integrally molded of a thermoplastic elastomer.
  • A "throat region" of the tongue adjoining the step body, having at least one open face.
  • A plurality of "vertically disposed reinforcing plates" within the throat region.
  • The reinforcing plates extend from the open face and are arranged to resist torque from an off-axis load (a feature further defined in other claims, e.g., in the related '796 Patent, as dividing the volume into triangularly prismatic cells).

U.S. Patent No. 8,919,796 - “Integrally Molded Polymer Hitch Step”

Issued December 30, 2014

• Technology Synopsis: This patent discloses an integrally molded polymer hitch step with a design focused on providing torsional rigidity. The invention centers on the "throat region" connecting the step platform to the tongue, which contains reinforcing plates that divide the internal volume into "substantially triangularly prismatic cells" to resist twisting forces from off-axis loads ('796 Patent, Abstract; col. 2:15-23).
• Asserted Claims: Independent Claim 7 is asserted (Compl. ¶¶ 30-31).
• Accused Features: The complaint alleges that the entire HaulMaster Hitch Mount Bumper Step infringes (Compl. ¶¶ 3, 30).

U.S. Patent No. 9,145,035 - “Collapsible Step Platform and Receiver Post”

Issued September 29, 2015

• Technology Synopsis: This patent describes a collapsible step platform and receiver post (tongue) combination. The invention lies in the internal geometry of both the step body, which features "oblique cross members" designed to collapse and absorb impact, and the receiver post, which contains specifically arranged internal support structures and cylinders for the hitch pin ('035 Patent, Abstract; col. 1:21-44).
• Asserted Claims: Independent Claim 1 is asserted (Compl. ¶¶ 35-36).
• Accused Features: The complaint alleges that the entire HaulMaster Hitch Mount Bumper Step infringes (Compl. ¶¶ 3, 35).

III. The Accused Instrumentality

Product Identification

The accused product is the "HaulMaster" Hitch Mount Bumper Step (Compl. ¶3).

Functionality and Market Context

• The accused product is an automotive accessory designed to be inserted into a vehicle's trailer hitch receiver to function as a step, providing easier access to a truck bed or cargo area (Compl. ¶3). A photograph provided in the complaint shows the accused HaulMaster Bumper Step product, which is a T-shaped, black, textured-surface accessory designed for a trailer hitch (Compl., Ex. 1). The complaint alleges that the product is made, imported, marketed, and sold by Defendant nationwide (Compl. ¶16).
• Plaintiff alleges the accused product is sold in the same channels of trade as its own BUMPSTEP® product and that the "Bumper Step" name used by Defendant is a "colorable imitation" of its trademark (Compl. ¶16).

IV. Analysis of Infringement Allegations

The complaint provides notice-level allegations without a detailed infringement theory or element-by-element mapping. The following charts are based on the core allegations and the asserted claims.

U.S. Patent No. 8,727,364 Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
a step body having a rear panel substantially orthogonal to the axis...	The accused product is alleged to have a step body with a rear panel and side panels.	¶20	col. 3:60-65
at least one transverse member of the step body disposed forwardly of the rear panel...	The accused product is alleged to contain at least one internal transverse support member.	¶20	col. 5:4-7
a plurality of oblique cross members each extending from the interior side of the rear panel to the rear surface of the transverse member...	The accused product is alleged to contain multiple internal oblique cross members.	¶20	col. 5:37-41
...the oblique cross members adapted to collapse in a forward direction upon impact being applied to the exterior surface of the rear panel...	The internal oblique members of the accused product are alleged to be structured to collapse and absorb energy upon rear impact.	¶20	col. 5:50-55

Identified Points of Contention

• Technical Question: A primary factual dispute will likely concern the internal structure of the accused product. Does discovery evidence show that the HaulMaster step contains the "transverse member" and "plurality of oblique cross members" as claimed? The complaint itself provides no such evidence.
• Scope Question: If the accused product has internal ribbing, are those structures "adapted to collapse" as required by the claim's functional language? This raises the question of whether any structure that happens to collapse upon impact meets the limitation, or if the structure must be specifically designed for that purpose.

U.S. Patent No. 8,851,495 Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
a substantially hollow step body... and a substantially hollow tongue... integrally molded of a thermoplastic elastomer.	The accused product is alleged to be an integrally molded thermoplastic elastomer part with a hollow step and tongue.	¶25	col. 2:40-42
a throat region of the tongue adjoining the step body... at least one external face of the throat region being in parallel to the axis and being open...	The accused product's tongue is alleged to have a hollow throat region with an open face to facilitate molding.	¶25	col. 2:57-62
a plurality of vertically disposed reinforcing plates of the throat region extending from the open face...	The accused product's throat region is alleged to contain multiple internal reinforcing plates.	¶25	col. 2:59-62
...the reinforcing plates of the throat region are so disposed that they will resist torque around the axis...	The internal plates of the accused product's throat region are alleged to be arranged to provide torsional rigidity against off-axis loads.	¶25	col. 2:18-21

Identified Points of Contention

• Technical Question: Does the accused product's tongue contain a "throat region" with the claimed internal "reinforcing plates"? As with the '364 patent, this is a central factual question for discovery.
• Scope Question: Does the internal geometry of the accused product's tongue, if present, meet the claim definition of "reinforcing plates" arranged to resist torque? Related patents in the family (e.g., the '796 Patent) further define this structure as forming "substantially triangularly prismatic cells," a term that will likely be central to claim construction disputes.

V. Key Claim Terms for Construction

For the '364 Patent

• The Term: "adapted to collapse in a forward direction"
• Context and Importance: This functional language is critical for infringement. The analysis will turn on whether the accused product's internal structures are merely present or if they are specifically configured to achieve the claimed energy-absorbing collapse. Practitioners may focus on this term because it links a structural feature (oblique members) to a required function (collapsing to absorb energy).
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification states that upon impact, "the collapsing oblique cross members 208 will absorb at least some of the force of the impact" ('364 Patent, col. 5:52-55). This could support an interpretation where any oblique member that does, in fact, collapse and absorb some force meets the limitation.
  • Evidence for a Narrower Interpretation: The specific embodiment discloses the members are "disposed at an angle [of] approximately forty-five degrees" ('364 Patent, col. 5:42-45), suggesting a specific, intentional design rather than an incidental property of any internal rib.

For the '495 Patent and related patents

• The Term: "substantially triangularly prismatic cells" (from related '796 Patent, Claim 1, which informs the scope of the '495 patent family)
• Context and Importance: This term defines the core inventive concept for achieving torsional rigidity in the throat region. Whether the accused product's internal voids can be characterized as such will be a dispositive issue.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The word "substantially" implies that perfect geometric forms are not required. The purpose is to "resist torque" ('495 Patent, col. 2:18-21), so an argument could be made that any generally three-sided cell structure that provides this function is covered.
  • Evidence for a Narrower Interpretation: Figure 14 of the patent family shows a specific lattice of intersecting diagonal and orthogonal ribs creating well-defined triangles ('364 Patent, Fig. 14). A defendant may argue the term is limited to this disclosed arrangement, which divides larger cells into smaller, more rigid triangular ones.

VI. Other Allegations

Indirect Infringement

The complaint alleges inducement of infringement for all four patents, stating that Defendant induces its customers to use the accused products (Compl. ¶¶ 21, 26, 31, 36). The complaint does not specify the acts of inducement, such as providing user manuals or instructions.

Willful Infringement

Willfulness is alleged for all four patents. The complaint asserts this infringement "has been and continues to be willful and deliberate" (Compl. ¶¶ 23, 28, 33, 38). The alleged basis for pre-suit knowledge is constructive notice via Plaintiff's marking of its own patented products (Compl. ¶18).

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

This dispute appears to center on two fundamental questions that will require significant factual development and expert analysis.

• A central evidentiary question will be one of internal structure: what does discovery reveal about the internal geometry of the accused HaulMaster product, and does it contain the specific "oblique cross members" ('364 Patent) and reinforcing plates forming "triangularly prismatic cells" ('495 and '796 Patents) recited in the asserted patents?
• A key legal question will be one of functional and descriptive scope: if the accused product possesses internal ribbing, are those structures "adapted to collapse" in the specific manner required by the '364 Patent, and do any hollows in its tongue region constitute "substantially triangularly prismatic cells" as claimed in the '495 and '796 Patents? The resolution of these claim construction issues will likely determine the outcome of the infringement analysis.