DCT
1:16-cv-00215
Cummins Inc v. ADP Distributors
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Cummins Ltd. (England and Wales) and Cummins Inc. (Indiana)
- Defendant: ADP Distributors USA, Inc. (California) and ADP Distributors, Inc. (Canada), collectively d/b/a Rotomaster
- Plaintiff’s Counsel: Foley & Lardner LLP
- Case Identification: 1:16-cv-00215, S.D. Ind., 01/26/2016
- Venue Allegations: Plaintiff alleges venue is proper because a substantial part of the events giving rise to the action occurred in the district, and because Defendants are subject to personal jurisdiction there.
- Core Dispute: Plaintiff alleges that Defendant’s aftermarket turbochargers and replacement parts infringe patents related to variable geometry turbine linkage mechanisms and control systems.
- Technical Context: The technology concerns variable geometry turbochargers (VGTs), which improve internal combustion engine efficiency by dynamically adjusting a turbine's characteristics to match engine operating conditions.
- Key Procedural History: The complaint alleges that Defendants had pre-suit knowledge of the patents-in-suit as of July 12, 2013, as a result of correspondence from the Plaintiff. This allegation forms the basis for the willfulness claims.
Case Timeline
| Date | Event |
|---|---|
| 1997-04-12 | U.S. Patent No. 6,401,563 Priority Date |
| 1997-06-10 | U.S. Patent No. 5,941,684 Priority Date |
| 1999-08-24 | U.S. Patent No. 5,941,684 Issued |
| 2002-06-11 | U.S. Patent No. 6,401,563 Issued |
| 2013-07-12 | Defendants allegedly received notice of Plaintiff's patent portfolio |
| 2016-01-26 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,401,563 - "Actuating Mechanism For A Slidable Nozzle Ring"
- Patent Identification: U.S. Patent No. 6,401,563, "Actuating Mechanism For A Slidable Nozzle Ring", issued June 11, 2002 (Compl. ¶17).
The Invention Explained
- Problem Addressed: In a variable geometry turbocharger, the movable nozzle ring and the stationary housing expand and contract at different rates due to extreme temperature changes. This "differential expansion" can cause mechanical distortion if components are rigidly fixed, or, if connections are made too loose to compensate, it can lead to poor positional accuracy and excessive vibration-induced wear ('563' Patent, Cert. of Corr., p. 1 of 2, col. 1:12-61).
- The Patented Solution: The patent describes a linkage mechanism that connects an actuator rod to the nozzle ring via a "foot member." This foot is pivotally connected to the nozzle ring at one end and has a stop pin at the other end that fits loosely in a bore, allowing for slight pivotal movement. This arrangement accommodates the radial thermal expansion of the nozzle ring relative to the housing, while providing a large, stable bearing surface to maintain precise axial control and reduce wear ('563 Patent, col. 1:50-52, col. 2:6-28; Fig. 2).
- Technical Importance: The invention provides a robust linkage designed to maintain precise control over turbine geometry while withstanding the thermal and vibratory stresses of an engine exhaust environment ('563 Patent, Cert. of Corr., p. 2 of 2, col. 2:1-12).
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claim 2, and reserves the right to assert claims 2 through 8 (Compl. ¶¶ 39, 48).
- Independent Claim 1 requires:
- An annular nozzle ring guided for parallel movement.
- At least one rod guided for parallel movement.
- A linkage mechanism pivotally connecting the rod to the nozzle ring.
- The rod being pivotal with respect to its own central axis.
U.S. Patent No. 5,941,684 - "Variable Geometry Turbine"
- Patent Identification: U.S. Patent No. 5,941,684, "Variable Geometry Turbine", issued August 24, 1999 (Compl. ¶26).
The Invention Explained
- Problem Addressed: The patent's background section notes that controlling the position of a turbine's movable sidewall (nozzle ring) can be difficult, particularly as it approaches the fully closed position, where aerodynamic forces can create instability ('684' Patent, col. 1:33-46).
- The Patented Solution: The invention uses one or more springs that provide a "non-linear length to spring force characteristic" to bias the sidewall. This non-linear spring force is designed to counteract the changing aerodynamic forces from gas flow, such that the resultant force on the sidewall "increases continuously" as it moves from the open to the closed position. This continuous increase in force prevents instability and allows for precise control across the full range of movement ('684 Patent, Abstract; col. 2:56-65). The patent suggests this can be achieved either with a specially designed non-linear spring or by arranging multiple linear springs to engage sequentially ('684 Patent, col. 2:1-5).
- Technical Importance: By ensuring stable control over the turbine geometry, especially at near-closed positions, the invention allows for more precise optimization of engine performance, fuel efficiency, and emissions control ('684 Patent, col. 4:19-22).
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claim 2, and reserves the right to assert claims 2 through 7 (Compl. ¶¶ 41, 55).
- Independent Claim 1 requires:
- A variable geometry turbine with standard components (housing, turbine wheel, displaceable sidewall).
- At least one spring biasing the sidewall.
- A "means for applying an axial force" (e.g., an actuator) to oppose the spring.
- The spring having "non-linear length to spring force characteristics" that cause the resultant force (from the spring and gas flow) to increase continuously as the sidewall is displaced.
III. The Accused Instrumentality
Product Identification
- The complaint identifies the "Accused Rotomaster Turbocharger (Model No. H1550112N)" and the "Accused Rotomaster Replacement Part," which is described as a nozzle ring assembly (Compl. ¶¶ 35, 42).
Functionality and Market Context
- The accused products are aftermarket turbochargers and replacement components allegedly "intended by Defendants to be used with Cummins engines" (Compl. ¶¶ 37, 44). The complaint provides a photograph showing the Accused Rotomaster Replacement Part, which depicts an annular nozzle ring with attached rods (Compl. ¶43). It also includes photographs of the fully assembled Accused Rotomaster Turbocharger, showing the nozzle ring, turbine wheel, and an external actuator (Compl. ¶36).
IV. Analysis of Infringement Allegations
U.S. Patent No. 6,401,563 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| an annular nozzle ring incorporated into said turbine inlet... guided for movement parallel to said central axis | The accused products include an annular nozzle ring for a turbocharger. | ¶49 | col. 2:53-56 |
| at least one rod guided for movement in a direction parallel to the central axis of said annular nozzle ring | The accused products include at least one rod guided for parallel movement. | ¶49 | col. 2:56-58 |
| a linkage mechanism connected to one end of said rod and pivotally connected to said annular nozzle ring | The accused products have a linkage that pivotally connects the rod to the ring. | ¶49 | col. 2:58-60 |
| said rod being pivotal with respect to the central axis of said rod | The accused rod is alleged to be pivotal about its own axis. | ¶49 | col. 1:53-55 |
- Identified Points of Contention:
- Technical Questions: The complaint alleges infringement of dependent claim 2, which requires a "foot member" connecting the rod and nozzle ring (Compl. ¶50). A central question will be whether the component seen in the complaint's photograph of the accused part (Compl. ¶43) meets the structural definition of the "foot member" as a "transverse arcuate component" described in the '563 Patent specification (col. 1:50-51).
- Scope Questions: The complaint's allegations track the claim language without providing specific evidence of how, for instance, the accused linkage is "pivotally connected" or how the rod is "pivotal with respect to its central axis" (Compl. ¶49). The case may turn on whether the accused product's structure performs these functions in the manner disclosed in the patent.
U.S. Patent No. 5,941,684 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A variable geometry turbine comprising a housing, a turbine wheel... a gas inlet passage... defined between a fixed wall and an annular sidewall which is... displaceable... between... first and second positions | The Accused Rotomaster Turbocharger is a variable geometry turbine with a housing, turbine wheel, and displaceable sidewall. | ¶56 | col. 5:1-7 |
| at least one spring biasing the sidewall away from the fixed wall towards the first position | The accused product includes a spring that biases the sidewall. | ¶56 | col. 5:7-9 |
| and means for applying an axial force to the sidewall in opposition to the at least one spring to thereby control the axial position of the sidewall | The accused product has a means, such as the actuator shown in a photograph (Compl. ¶36), to control the sidewall's position. | ¶56 | col. 5:9-12 |
| wherein the said at least one spring has a non-linear length to spring force characteristics such that the resultant... increases continuously as the sidewall is displaced from the first position to the second position. | The complaint alleges the spring in the accused product has this specific non-linear characteristic and achieves this result. | ¶56 | col. 5:12-18 |
- Identified Points of Contention:
- Technical Questions: The final limitation of claim 1 is highly functional. Infringement requires not just a non-linear spring, but one that causes the resultant force (a combination of spring force and aerodynamic gas force) to "increase continuously." What evidence will be presented to prove the accused turbocharger's spring system achieves this specific, complex functional outcome during operation?
- Scope Questions: The "means for applying an axial force" limitation is subject to 35 U.S.C. § 112(f). Its scope is therefore limited to the structures disclosed in the patent (e.g., a pneumatic actuator or an internal piston arrangement) and their equivalents ('684 Patent, col. 1:20-22, col. 3:8-14). A dispute may arise over whether the actuator in the accused product is structurally equivalent to those disclosed in the patent.
V. Key Claim Terms for Construction
U.S. Patent No. 6,401,563
- The Term: "foot member" (from dependent claim 2)
- Context and Importance: Plaintiff specifically alleges this feature is present in the accused products (Compl. ¶50). Practitioners may focus on this term because its construction will determine whether the specific linkage design of the accused product falls within the scope of the asserted dependent claim, which is a key part of Plaintiff's infringement theory.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue the term should be defined functionally to encompass any component that serves as the interface between the actuator rod and the nozzle ring.
- Evidence for a Narrower Interpretation: The specification defines the "foot" with structural specificity as a "transverse arcuate component" ('563 Patent, col. 1:50-51) and provides detailed illustrations in Figures 2-4. This could support a narrower construction limited to the disclosed shape and configuration.
U.S. Patent No. 5,941,684
- The Term: "non-linear length to spring force characteristics" (from claim 1)
- Context and Importance: This term is the central technical concept of the '684 patent. The infringement analysis for claim 1 depends entirely on whether the accused device's spring system meets this definition.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party might argue that any spring force curve that deviates from a straight line is "non-linear."
- Evidence for a Narrower Interpretation: The claim itself ties the "non-linear... characteristics" to a specific functional result: that the "resultant" force "increases continuously" ('684 Patent, col. 5:14-18). This suggests the term should be construed not as any non-linearity, but as the specific kind required to solve the stability problem described in the patent's background. The specification discloses embodiments that achieve this, such as using multiple springs that engage at different points or a conical spring ('684 Patent, col. 3:24-34; col. 4:58-64).
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced and contributory infringement for the '563 patent based on the sale of the "Accused Rotomaster Replacement Part" (Compl. Counts III & IV). The inducement allegation is based on alleged knowledge and the provision of installation instructions (Compl. ¶63). The contributory infringement allegation is based on the part being a material, non-staple component made especially for use in an infringing system (Compl. ¶¶67-70).
- Willful Infringement: The complaint alleges willful infringement of both patents, based on alleged pre-suit knowledge stemming from correspondence sent to Defendants on or about July 12, 2013 (Compl. ¶¶ 25, 33, 51, 58).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of functional proof: Can the plaintiff provide empirical evidence that the spring system in the accused turbocharger, when combined with operational gas flow forces, generates the "continuously" increasing "resultant force" required by claim 1 of the '684 patent? This presents a significant technical burden beyond simply analyzing the spring's properties in isolation.
- A second key issue will be one of structural scope: For the '563 patent, does the mechanism connecting the rod to the nozzle ring in the accused device meet the definition of the "foot member" recited in asserted dependent claim 2? The case may turn on whether the term is construed to cover any interface structure or is limited to the specific "transverse arcuate" embodiment detailed in the patent.
- Finally, a critical question for damages will be willfulness: Given the allegation of pre-suit notice in 2013, the court will likely scrutinize the defendant's conduct after that date to determine if continued alleged infringement was objectively reckless, which could expose the defendant to a risk of enhanced damages.