DCT

2:17-cv-11879

Horizon Global Americas Inc v. Cur

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Key Events
Amended Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:17-cv-11879, E.D. Mich., 01/29/2018
  • Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Michigan because Defendant has committed acts of infringement in the district and maintains a regular and established place of business, including a physical warehouse and engineering facility, in Wixom, Michigan.
  • Core Dispute: Plaintiff alleges that Defendant’s towing equipment, including safety chain anchors, hitches, trailer signal converters, and trailer brake controllers, infringes eight U.S. patents related to various aspects of towing technology.
  • Technical Context: The technologies at issue pertain to the vehicle towing industry, addressing mechanical security, electrical signal compatibility, and electronic brake control for towed trailers.
  • Key Procedural History: The complaint alleges a history of competition between the parties. It asserts Defendant’s pre-suit knowledge of several patents-in-suit based on citations in Defendant’s own patents to the asserted patents or related family members, as well as Plaintiff’s marking of its commercial products with the relevant patent numbers.

Case Timeline

Date Event
1996-04-05 Priority Date for U.S. Patent No. 6,012,780
1996-08-20 Priority Date for U.S. Patent No. 6,068,352
2000-01-11 U.S. Patent No. 6,012,780 Issued
2000-05-30 U.S. Patent No. 6,068,352 Issued
2008-03-11 Priority Date for U.S. Patent No. 8,179,142
2009-10-14 Priority Date for U.S. Patent Nos. 8,215,658; 8,360,458; 9,522,583
2010-07-26 Priority Date for U.S. Patent No. 9,592,863
2012-05-15 U.S. Patent No. 8,179,142 Issued
2012-07-10 U.S. Patent No. 8,215,658 Issued
2013-01-29 U.S. Patent No. 8,360,458 Issued
2013-09-15 Priority Date for U.S. Patent No. 9,248,713
2015-01-01 Approx. Launch Date for Accused MY2015 Jeep Renegade Vehicles
2016-02-02 U.S. Patent No. 9,248,713 Issued
2016-12-20 U.S. Patent No. 9,522,583 Issued
2017-03-14 U.S. Patent No. 9,592,863 Issued
2018-01-29 First Amended Complaint Filed

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

U.S. Patent No. 9,522,583 - Removable Safety Chain Tie Down Apparatus

  • Patent Identification: U.S. Patent No. 9,522,583, "Removable Safety Chain Tie Down Apparatus," issued December 20, 2016.

The Invention Explained

  • Problem Addressed: The patent addresses the need for a safety chain anchor for gooseneck hitches that can be easily removed to avoid obstructing the truck bed when not in use, while remaining secure during towing operations (’583 Patent, col. 1:10-21).
  • The Patented Solution: The invention is a tie-down apparatus featuring a body that inserts into a receiving member in the truck bed and rotates between an unlocked and a locked position. A separate locking member, such as a pin, moves axially through the body. The geometry of the body and receiving member is designed such that the locking member can only be fully engaged to prevent rotation when the body is in the fully rotated, locked position, creating a secure connection (’583 Patent, Abstract; col. 3:1-12).
  • Technical Importance: This design provides a quick-install, tool-free anchoring system that maintains a flat, unobstructed truck bed surface for general cargo use when the towing components are removed (’583 Patent, col. 1:10-21).

Key Claims at a Glance

  • The complaint asserts independent Claim 1 (Compl. ¶30).
  • Essential elements of Claim 1 include:
    • A tie down apparatus comprising a body member and a locking member.
    • The body member is rotatable about an axis between first and second rotational positions within a receiving member.
    • The locking member extends through the body member and is axially moveable between first and second axial positions.
    • The locking member in its second axial position prevents the body member from rotating from its second (locked) rotational position back to its first.
    • The locking member is prevented from moving into its second axial position until the body member has been rotated from the first to the second rotational position.
  • The complaint does not explicitly reserve the right to assert dependent claims for this patent.

U.S. Patent No. 8,360,458 - Removable Safety Chain Tie Down Apparatus

  • Patent Identification: U.S. Patent No. 8,360,458, "Removable Safety Chain Tie Down Apparatus," issued January 29, 2013.

The Invention Explained

  • Problem Addressed: The patent addresses the need for a robust and integrated mounting system for removable safety chain tie-downs, particularly for gooseneck hitches that are mounted to the vehicle frame beneath the truck bed (’458 Patent, col. 1:10-21).
  • The Patented Solution: The invention describes a complete mounting system comprising an under-bed rail structure connected to the vehicle frame. This rail structure includes sockets that receive a removable tie-down apparatus. A "mid rail" connects the primary rails and includes a hitch ball socket, integrating the safety chain anchor points with the main hitch structure (’458 Patent, Abstract; Fig. 8).
  • Technical Importance: This integrated system provides strong, frame-mounted anchor points for safety chains while allowing the in-bed components to be removed, thus preserving an unobstructed truck bed floor (’458 Patent, col. 2:45-50).

Key Claims at a Glance

  • The complaint asserts independent Claim 1 (Compl. ¶43).
  • Essential elements of Claim 1 include:
    • A hitch mounting system comprising at least one rail connected to a vehicle frame.
    • At least one socket is formed in the rail.
    • A mid rail is connected to the at least one rail and includes a hitch ball socket.
    • A receiving member is secured to the socket.
    • A body member is inserted into the receiving member.
    • A locking member extends through the body member, where rotating the body member displaces the locking member to engage it with the receiving member.
  • The complaint does not explicitly reserve the right to assert dependent claims for this patent.

U.S. Patent No. 8,215,658 - Removable Safety Chain Tie Down Apparatus

  • Identification: U.S. Patent No. 8,215,658, "Removable Safety Chain Tie Down Apparatus," issued July 10, 2012 (Compl. ¶12).
  • Technology Synopsis: This patent describes a tie-down apparatus with a body member that rotates within a receiving member and a locking member that moves axially to secure it. The core technical concept is the inter-relationship between the rotation of the body and the axial movement of the lock, which prevents accidental disengagement (’658 Patent, Abstract).
  • Asserted Claims: At least Claim 1 is asserted (Compl. ¶55).
  • Accused Features: The "Infringing Anchors" (e.g., part no. 60608) are accused of infringing when used with a receiving member (Compl. ¶¶54-55).

U.S. Patent No. 9,248,713 - Safety Chain Engaging Device for Gooseneck Hitch

  • Identification: U.S. Patent No. 9,248,713, "Safety Chain Engaging Device for Gooseneck Hitch," issued February 2, 2016 (Compl. ¶13).
  • Technology Synopsis: The patent discloses a safety chain mounting device that attaches to a vehicle's frame member. It consists of a two-bracket system where a portion of the vehicle frame is positioned between a first bracket and a plate member of a second bracket, providing a secure, clamped attachment point for safety chain loops without requiring modification of the frame itself (’713 Patent, Abstract).
  • Asserted Claims: At least Claim 1 is asserted (Compl. ¶67).
  • Accused Features: The Curt OEM-Style Gooseneck Hitch for Ram (part no. 60613) is accused of infringing (Compl. ¶66).

U.S. Patent No. 9,592,863 - Fifth Wheel Hitch Isolation System

  • Identification: U.S. Patent No. 9,592,863, "Fifth Wheel Hitch Isolation System," issued March 14, 2017 (Compl. ¶14).
  • Technology Synopsis: This patent describes an isolation system for a fifth wheel hitch designed to dampen vibrations and shocks. The system uses a beam engaged with the hitch's cross-member, with a "cross-member isolator" to dampen longitudinal movement and a "wing isolator" to dampen radial displacement of the skid plate, improving ride comfort (’863 Patent, Abstract).
  • Asserted Claims: At least Claim 1 is asserted (Compl. ¶79).
  • Accused Features: The Curt Q-Series and A-Series 5th Wheel Hitches (e.g., part no. 16120) are accused of infringing (Compl. ¶¶78-79).

U.S. Patent No. 8,179,142 - Trailer Signal Converter

  • Identification: U.S. Patent No. 8,179,142, "Trailer Signal Converter," issued May 15, 2012 (Compl. ¶15).
  • Technology Synopsis: The patent is for an electronic signal converter that manages lighting signals between a towing vehicle and a trailer. A microcontroller receives input signals, monitors the current flow to the trailer lights with a sensing device, and reduces the duty cycle of the output signal if the current exceeds a threshold, thereby protecting the circuitry from overloads (’142 Patent, Abstract).
  • Asserted Claims: At least Claim 1 is asserted (Compl. ¶91).
  • Accused Features: OEM and after-market Curt Trailer Signal Converters (e.g., part nos. 56200, 56210) are accused of infringing (Compl. ¶¶24, 90).

U.S. Patent No. 6,068,352 - Microprocessor-Based Control for Trailer Brakes

  • Identification: U.S. Patent No. 6,068,352, "Microprocessor-Based Control for Trailer Brakes," issued May 30, 2000 (Compl. ¶16).
  • Technology Synopsis: This patent describes a microprocessor-based electronic trailer brake controller. The system uses an input circuit, a display, a power switching circuit, and a current sensing circuit, all managed by a microcontroller. The microcontroller illuminates indicator lights to show the relative level of braking and to indicate whether the trailer brakes are properly connected (’352 Patent, Abstract).
  • Asserted Claims: At least Claim 1 is asserted (Compl. ¶103).
  • Accused Features: The Curt Triflex brake control (part no. 51140) is accused of infringing (Compl. ¶¶102-103).

U.S. Patent No. 6,012,780 - Brake Controller for Trailer Brakes

  • Identification: U.S. Patent No. 6,012,780, "Brake Controller for Trailer Brakes," issued January 11, 2000 (Compl. ¶17).
  • Technology Synopsis: The patent claims a method for controlling trailer brakes using an accelerometer to sense both the rate of deceleration and the inclination (uphill/downhill grade) of the towing vehicle. A controller generates a variable signal based on both of these inputs to continuously proportion the braking amperage applied to the trailer, compensating for road grade (’780 Patent, Abstract).
  • Asserted Claims: At least Claim 1 is asserted (Compl. ¶115).
  • Accused Features: The Curt Triflex brake control (part no. 51140) is accused of infringing (Compl. ¶¶114-115).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are various towing products sold by Defendant Curt, collectively referred to as the "Infringing Products" (Compl. ¶24). These include:

  • Curt OEM-compatible gooseneck safety chain anchors ("Infringing Anchors") (Compl. ¶29).
  • Curt OEM-Style Gooseneck Hitch for Ram ("Infringing Tie-Downs") (Compl. ¶66).
  • Curt Q-Series and A-Series 5th Wheel Hitches ("Infringing Hitches") (Compl. ¶78).
  • Curt Trailer Signal Converters ("Infringing Signal Converters") (Compl. ¶90).
  • Curt Triflex brake control ("Infringing Brake Controllers") (Compl. ¶102).

Functionality and Market Context

  • The accused products provide various functions for the consumer and commercial towing market. The complaint alleges these products are sold through online stores like Amazon.com and etrailer.com, as well as brick-and-mortar dealers and installers (Compl. ¶¶25-26).
  • The Infringing Anchors are alleged to be mechanical devices that insert into a truck bed, rotate, and are locked by a pin to provide a secure point for attaching trailer safety chains (Compl. p. 8-9).
  • The Infringing Tie-Downs for Ram trucks are alleged to be a system of brackets that clamp onto the vehicle's frame to provide attachment points for safety chains (Compl. p. 19).
  • The Infringing Hitches are alleged to contain an isolation system with isolators that dampen forces along longitudinal and radial axes (Compl. p. 24-25).
  • The Infringing Signal Converters are described as electronic modules that convert vehicle light signals, such as pulse-width modulated signals, into a standard format compatible with trailer lights (Compl. p. 28).
  • The Infringing Brake Controllers are alleged to be electronic devices that use a "triple-axis motion-sensing accelerometer" to detect vehicle motion and apply a proportional braking force to the trailer (Compl. p. 32, 38).
  • The complaint alleges that Plaintiff and Defendant are "head-to-head competitors" in the towing product market (Compl. ¶31).

IV. Analysis of Infringement Allegations

'583 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a body member rotatable about an axis between first and second rotational positions within a receiving member The accused anchor product has a body member that is inserted into a receiving member in the truck bed and rotates between two positions. A diagram from the accused product's instructions allegedly illustrates the body member rotating from a first to a second rotational position (Compl. p. 8). ¶30 col. 3:28-31
a locking member extending through the body member and being axially moveable relative to the body member between first and second axial positions... The accused anchor has a locking member (a pin) that extends through the body member and moves axially. A diagram from the instructions allegedly shows the locking member moving axially between two positions (Compl. p. 9). ¶30 col. 3:32-35
...wherein the locking member in the second axial position prevents rotation of the body member from the second rotational position to the first rotational position... The complaint alleges that when the locking member is in its second axial position (fully inserted), it prevents the body member from rotating back to its first position. A photograph and annotated diagram allegedly show that when the pin is inserted, it sits in a "green shaded region of receiving member and thereby prevents anchor from being rotated back to first rotational position" (Compl. p. 9-10). The photograph of the accused product allegedly demonstrates the locking member preventing rotation of the body member from within the receiving member (Compl. p. 9). ¶30 col. 3:35-38
...and the locking member is prevented from moving from the first axial position to the second axial position until the body member is rotated from the first rotational position to the second rotational position. The complaint alleges that the shape of the receiving member prevents the locking pin from reaching its second axial position until the body member is rotated into its second rotational position. This is allegedly confirmed by instructions telling customers to rotate the anchor 90° before fully inserting the pin (Compl. p. 9-10). ¶30 col. 3:38-43

Identified Points of Contention

  • Scope Questions: A central question may be whether the accused product's simple pin qualifies as a "locking member" that is "axially moveable relative to the body member" in the specific manner claimed. The analysis may focus on the interaction between the pin, the body, and the separate receiving member to achieve the two-step locking function.
  • Technical Questions: A key factual question is whether the shape of the accused receiving member physically "prevents" the locking member from moving to its second axial position before rotation, as required by the final limitation of the claim, or if it merely guides it. The complaint relies on user instructions to support this limitation, raising the question of what the physical structure itself dictates.

'458 Patent Infringement Allegations

The complaint does not provide a claim chart for the ’458 Patent. It alleges that "Use of the Infringing Anchors with an underbed system having a rail, socket, and mid rail directly infringes at least claim 1 of the ‘458 patent" (Compl. ¶43). This presents a theory of system infringement, where the accused component (the anchor) is alleged to infringe when combined with other, unaccused components (the underbed system) to form the claimed invention.

Identified Points of Contention

  • Evidentiary Questions: The core issue will be evidentiary: what proof demonstrates that the accused "Infringing Anchors" are sold, intended for use with, and actually used in an "underbed system" that possesses the specific structural elements of a "rail, socket, and mid rail" as recited in Claim 1 of the ’458 Patent? The complaint does not specify which underbed system is being referenced in this count.

V. Key Claim Terms for Construction

For the ’583 Patent

  • The Term: "the locking member is prevented from moving ... until the body member is rotated"
  • Context and Importance: This functional language is the core of the invention's two-step safety lock. The dispute will likely center on the degree of "prevention" required. Practitioners may focus on this term because infringement hinges on whether the accused product's design imposes a mandatory sequence of operations (rotate, then insert pin) or merely suggests it.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claims do not specify the mechanism of prevention, which may support an interpretation covering any physical impediment, however simple, that obstructs the locking member's path before rotation.
    • Evidence for a Narrower Interpretation: The specification describes a specific embodiment where "a portion of the receiving member" physically blocks the path of the locking member's legs (’583 Patent, col. 4:41-48). This could support an argument that the term requires a direct, physical obstruction rather than just an inconvenient alignment.

For the ’458 Patent

  • The Term: "mid rail"
  • Context and Importance: This term defines a key component of the claimed mounting system. Since the infringement allegation is for the system as a whole, the existence and definition of a "mid rail" in the environment where the accused anchors are used will be critical.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent states a mid rail may "secure said cross members to one another" but does not limit its form, suggesting any connecting member between rails could qualify (’458 Patent, col. 7:23-25).
    • Evidence for a Narrower Interpretation: Figure 8 of the patent depicts the mid rail (14) as a distinct, central component that not only connects the two cross members (12) but also uniquely houses the hitch ball socket (16). This may support an interpretation requiring a single, central connecting piece that also serves as the hitch ball mount.

VI. Other Allegations

Indirect Infringement

The complaint alleges both induced and contributory infringement for multiple patents, including the '583 and '458 patents. The basis for inducement is Defendant’s alleged provision of "instructions, videos, and otherwise" that guide end-users to use the products in an infringing manner (Compl. ¶¶35, 48). The basis for contributory infringement is the allegation that the products have no substantial non-infringing use (Compl. ¶¶34, 37, 47, 50).

Willful Infringement

Willfulness is alleged for all asserted patents. The complaint alleges pre-suit knowledge based on: (a) Defendant’s own patents citing the asserted patents or their family members; (b) Plaintiff's products being marked with the relevant patent numbers; and (c) the parties being direct competitors in the same market (Compl. ¶¶31, 38, 44, 51, 56, 68, 80, 92, 104, 116).

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

  • A core issue will be one of functional operation: does the accused rotating anchor's pin-and-receiver mechanism operate with the specific two-step, prevention-based sequence required by the '583 patent's claims, or is there a fundamental difference in the locking function?
  • A key evidentiary question will be one of system assembly: for system claims like those in the '458 patent, what evidence will show that Defendant's separately sold anchors are actually used by customers in combination with an "underbed system" containing all the required structural elements, such as a "mid rail"?
  • The dispute over willful and indirect infringement will likely turn on the factual question of knowledge: can Plaintiff establish that Defendant had specific knowledge of the patents and their infringement prior to the lawsuit, based on the alleged patent citations and competitive landscape, sufficient to meet the standards for enhanced damages and indirect liability?