DCT
1:19-cv-11622
New England Wheels, Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: New England Wheels, Inc. (Massachusetts)
- Defendant: Delphini, L.L.C. (Montana)
- Plaintiff’s Counsel: Seyfarth Shaw LLP
- Case Identification: 1:19-cv-11622, D. Mass., 07/26/2019
- Venue Allegations: Plaintiff asserts that venue is proper in the District of Massachusetts because a substantial part of the events giving rise to the claim occurred there, including Defendant’s sending of patent infringement assertion letters to Plaintiff's Massachusetts-based business.
- Core Dispute: Plaintiff seeks a declaratory judgment that its van retrofitting products do not infringe Defendant's patents covering methods for replacing van sliding doors with bus-style doors, and further seeks a declaration that those patents are invalid.
- Technical Context: The technology involves the after-market modification of commercial vans by removing the original manufacturer's sliding door and retrofitting the opening with a custom frame and more accessible bus-style doors.
- Key Procedural History: The action was precipitated by a series of cease-and-desist letters from Defendant Delphini to Plaintiff New England Wheels, beginning in June 2019, alleging infringement of two patents. Plaintiff alleges these letters were also sent to its customers. Plaintiff responded by denying infringement and asserting the patents are invalid based on its own public and commercial van retrofitting activities that allegedly predate the patents' priority date by several years. The complaint alleges Defendant is a Non-Practicing Entity.
Case Timeline
| Date | Event |
|---|---|
| 2007-01-01 | Alleged earliest date of Plaintiff's prior art van retrofitting work |
| 2013-06-07 | Earliest priority date for the ’136 and ’910 Patents |
| 2014-12-11 | Publication date of application for the ’910 Patent |
| 2015-09-22 | U.S. Patent No. 9,139,136 issues |
| 2016-07-19 | U.S. Patent No. 9,393,910 issues |
| 2019-06-19 | Defendant sends first cease-and-desist letter to Plaintiff |
| 2019-06-28 | Plaintiff sends first response letter to Defendant |
| 2019-07-04 | Defendant sends second cease-and-desist letter to Plaintiff |
| 2019-07-10 | Plaintiff sends second response letter to Defendant |
| 2019-07-22 | Defendant sends third cease-and-desist letter to Plaintiff |
| 2019-07-26 | Complaint for Declaratory Judgment filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,139,136 - "Apparatus and Method to Retrofit a Sliding Door Opening of a Van," Issued Sep. 22, 2015
The Invention Explained
- Problem Addressed: The patent’s background section states that conventional passenger vans, often converted from cargo vans, do not include a door "properly configured to facilitate access via a side of the passenger van" (’136 Patent, col. 2:32-41). It further notes that the sliding doors on some vans can be cumbersome to operate (’136 Patent, col. 2:57-61).
- The Patented Solution: The invention is a method for retrofitting a van by removing the original sliding door and fitting an "interface element" into the resulting opening. (’136 Patent, Abstract). One or more new doors, such as "bus-style doors," are then fitted to this interface element to provide improved passenger access, with the new doors being operable by the van's driver. (’136 Patent, col. 1:53-61). The process is described as an "up-fitting and modification" particularly suited for newer, European-style vans that were replacing older American models. (’136 Patent, col. 3:1-8).
- Technical Importance: The technology provides a standardized method for converting modern van platforms into multi-passenger vehicles (termed "Minibus") with more convenient and accessible side doors. (’136 Patent, col. 3:1-12).
Key Claims at a Glance
- The complaint seeks a declaration of non-infringement of all claims, and specifically references independent claims 1 and 8 (Compl. ¶77).
- Independent Claim 1 (Method):
- removing a sliding door from the van;
- fitting an interface element into a sliding door opening of the van, the sliding door opening comprising a via left after removal of the sliding door, a top edge of the sliding door opening disposed proximate to an original roof of the van; and
- fitting one or more doors to the interface element of the van, wherein the one or more doors are dimensioned to accommodate an adult person and configured to be operable by a driver of the van.
- Independent Claim 8 (Method):
- removing an original door from the vehicle;
- fitting an interface element into a door opening of the vehicle, the door opening comprising a via left after removal of the original door, the door opening dimensioned such that a vertical height of the opening is at least sixty inches, the interface element comprising a header proximate to the original roof; and
- fitting one or more doors to the interface element of the vehicle, wherein the one or more doors are configured to be operable by a driver of the vehicle.
U.S. Patent No. 9,393,910 - "Apparatus and Method to Retrofit a Sliding Door Opening of a Van," Issued Jul. 19, 2016
The Invention Explained
- Problem Addressed: The patent addresses the same technical problem as its parent '136 Patent: the doors on standard passenger vans are not well-suited for easy passenger entry and exit, particularly as the market shifts from traditional American vans to taller, European-style models (’910 Patent, col. 2:24-36; col. 2:56-col. 3:9).
- The Patented Solution: The patent claims an apparatus, rather than a method, for achieving the retrofit. It describes a "bus door apparatus" that includes an "interface element" designed to fit into a van's original side door opening. (’910 Patent, col. 1:41-45). This interface element then supports one or more new "bus-style doors" that are operable by the driver, creating a more accessible entryway. (’910 Patent, col. 1:45-49).
- Technical Importance: The claimed apparatus provides the physical components needed to modify stock commercial vans into specialized passenger vehicles, enabling a market for customized van conversions. (’910 Patent, col. 3:1-9).
Key Claims at a Glance
- The complaint seeks a declaration of non-infringement of all claims, and specifically references independent claims 1, 7, 8, 11, 14, and 15 (Compl. ¶78). The lead apparatus claims are 1 and 8.
- Independent Claim 1 (Apparatus - Vehicle):
- an opening disposed on a side of the vehicle, the opening defined by an original roof, a floor panel and two lateral edges and dimensioned to couple to a sliding door and such that a vertical height of the opening is at least sixty inches high;
- a bus door apparatus, the bus door apparatus comprising: an interface element configured to fit within and couple to the opening of the vehicle, the interface element comprising a header proximate to the original roof; and
- one or more bus-style doors configured to fit the interface element of the vehicle, wherein the one or more bus-style doors are configured to be operable by a driver of the vehicle.
- Independent Claim 8 (Apparatus - Standalone):
- an interface element configured to fit an original door opening of a vehicle, the interface element comprising a header configured to couple to the original door opening proximate to an original roof of the vehicle, wherein the original door opening is dimensioned such that a vertical height of the original door opening is at least sixty inches high; and
- one or more bus-style doors configured to fit the interface element of the vehicle, wherein the one or more bus-style doors are configured to be operable by a driver of the vehicle.
III. The Accused Instrumentality
Product Identification
Plaintiff’s products and methods for retrofitting commercial vans, including but not limited to the Ford Transit and Ram Promaster models (Compl. ¶¶1, 13). The complaint also discusses Plaintiff's "Frontrunner bus," which it contends is not a retrofitted vehicle and therefore does not infringe (Compl. ¶¶63-64).
Functionality and Market Context
Plaintiff's business includes retrofitting vans by "removing the sliding door, and replacing it with other lines of doors, e.g., bus doors" (Compl. ¶3). Plaintiff alleges that it has been performing this type of work since at least 2007 (Compl. ¶80). For its invalidity argument, Plaintiff describes a 2007 retrofitted Ford E-Series van, which it alleges is prior art to the patents-in-suit (Compl. ¶81). A photograph of this 2007 vehicle is referenced as evidence of the prior art (Compl. ¶81, Exhibit F).
IV. Analysis of Infringement Allegations
As this is a complaint for declaratory judgment of non-infringement and invalidity, it does not contain affirmative infringement allegations. Instead, it presents an invalidity theory by mapping the patent claims to Plaintiff's alleged prior art. The following tables summarize this invalidity argument.
U.S. Patent No. 9,139,136 Invalidity Allegations
| Claim Element (from Independent Claim 1) | Alleged Prior Art Functionality (Plaintiff's 2007 Retrofit) | Complaint Citation | Patent Citation |
|---|---|---|---|
| removing a sliding door from the van; | The complaint alleges Plaintiff's method includes removing a sliding door from the van. | ¶¶80, 83 | col. 11:25-26 |
| fitting an interface element into a sliding door opening of the van, the sliding door opening comprising a via left after removal of the sliding door, a top edge of the sliding door opening disposed proximate to an original roof of the van; | Plaintiff alleges its method includes fitting an interface element into the opening left by the removed sliding door, with the opening being proximate to the original roof. | ¶83 | col. 11:27-32 |
| and fitting one or more doors to the interface element of the van, wherein the one or more doors are dimensioned to accommodate an adult person and configured to be operable by a driver of the van. | Plaintiff alleges its method includes fitting doors to the interface element that are dimensioned for an adult and can be operated by the driver. | ¶83 | col. 11:33-37 |
U.S. Patent No. 9,393,910 Invalidity Allegations
| Claim Element (from Independent Claim 1) | Alleged Prior Art Functionality (Plaintiff's 2007 Retrofit) | Complaint Citation | Patent Citation |
|---|---|---|---|
| an opening disposed on a side of the vehicle, the opening defined by an original roof, a floor panel and two lateral edges and dimensioned to couple to a sliding door and such that a vertical height of the opening is at least sixty inches high; | Plaintiff alleges its 2007 retrofitted van includes an opening on the side of the vehicle with a vertical height of at least sixty inches. | ¶¶38, 82 | col. 11:20-24 |
| a bus door apparatus, the bus door apparatus comprising: an interface element configured to fit within and couple to the opening of the vehicle, the interface element comprising a header proximate to the original roof; and | Plaintiff alleges its 2007 van includes a bus door apparatus with an interface element that fits the opening and has a header near the original roof. | ¶¶38, 82 | col. 11:25-29 |
| one or more bus-style doors configured to fit the interface element of the vehicle, wherein the one or more bus-style doors are configured to be operable by a driver of the vehicle. | Plaintiff alleges its 2007 van includes one or more bus-style doors fitted to the interface element and configured to be operable by the driver. | ¶¶38, 82 | col. 11:30-34 |
Identified Points of Contention
- Evidentiary Question: The complaint's primary assertion is that the patents are invalid in view of Plaintiff's own prior work from 2007 (Compl. ¶¶80-83). A central question will be what documentary and testimonial evidence Plaintiff can produce to corroborate its public use and sale of these allegedly invalidating retrofitted vans from a time period that predates the 2013 priority date of the patents.
- Technical Question: The complaint does not provide specific technical details about Plaintiff's currently accused products (e.g., retrofitted Ford Transits). An issue for the non-infringement portion of the case will be whether the specific components and methods used in Plaintiff's current retrofits meet the limitations of the asserted claims, a question for which the complaint offers no detailed analysis.
V. Key Claim Terms for Construction
The Term: "interface element"
Context and Importance: This term appears in the independent claims of both patents and describes the critical component that bridges the original van body and the new door system. The entire dispute may hinge on its definition, as it is central to both the infringement analysis of current products and the invalidity analysis based on prior art products.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification suggests the term is not limited to a single structure, stating the element "can be a frame or connector" (’910 Patent, col. 1:43-44) and that it "comprises at least one of: a frame or a rubber-like connector" (’136 Patent, col. 12:1-2).
- Evidence for a Narrower Interpretation: The detailed description shows a specific embodiment of a "frame 205" that includes multiple parts such as "jambs 215, sill 220, and interface portions 225" (’136 Patent, col. 4:56-62). Defendant may argue that the term should be limited to such a structured frame assembly rather than any generic adapter.
The Term: "bus-style doors"
Context and Importance: This term, used in the ’910 Patent, defines the type of door being installed. Practitioners may focus on this term because its scope will determine whether the doors on Plaintiff's products fall within the claims. If "bus-style" is construed narrowly, Plaintiff may have a straightforward non-infringement argument.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification lists several door types that fall under the invention, including "a double door, a bi-fold door, a parallel door, or a sedan door" (’910 Patent, col. 3:27-29), suggesting the term refers to a functional category of doors suitable for passenger access, rather than a single design.
- Evidence for a Narrower Interpretation: The context of modifying a van into a "Minibus" (’910 Patent, col. 3:1-9) could be used to argue that "bus-style" implies doors with features commonly found on commercial buses, such as automated bi-parting or folding mechanisms, as opposed to simpler hinged doors.
VI. Other Allegations
Indirect Infringement
The complaint does not provide sufficient detail for analysis of indirect infringement. It notes that Defendant sent cease-and-desist letters to Plaintiff's "customers and prospective customers" (Compl. ¶70), but does not plead facts related to the elements of inducement or contributory infringement.
Willful Infringement
Willful infringement is not alleged. As a declaratory judgment plaintiff, New England Wheels instead pleads facts to counter a future willfulness claim, stating it had no actual knowledge of the patents prior to receiving Defendant's letter on or around June 20, 2019 (Compl. ¶58).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of invalidity based on prior public use: Can Plaintiff produce clear and convincing evidence to corroborate its claim that its 2007 van retrofitting activities disclosed every element of the asserted claims, thereby rendering them invalid?
- A key question for both invalidity and infringement will be one of claim scope: How will the court construe the term "interface element"? Its construction will likely determine whether Plaintiff's prior art and its currently accused products fall within the scope of the patents.
- A significant secondary issue will be one of enforcement conduct: Did Defendant's pre-suit communications with Plaintiff's customers, which allegedly asserted infringement by a non-infringing product (the "Frontrunner bus"), cross the line from permissible patent enforcement into tortious interference with business relations under state law?