DCT

2:17-cv-12793

Transtex LLC v. WABCO Holdings Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: Transtex LLC v. WABCO Holdings Inc., 2:17-cv-00290, E.D. Tex., 08/24/2017
  • Venue Allegations: Plaintiff alleges venue is proper because Defendants transact business in the district and have committed acts of patent infringement in the district.
  • Core Dispute: Plaintiff alleges that Defendant’s flat panel and wishbone style trailer skirts infringe eight patents related to aerodynamic trailer skirt assemblies, panels, and support members.
  • Technical Context: The technology concerns aerodynamic side skirts for semi-trailers, which are designed to reduce air drag and improve fuel efficiency in the commercial trucking industry.
  • Key Procedural History: The complaint alleges that Defendant Laydon had actual notice of the asserted patents based on prior patent infringement litigation between the parties filed on March 21, 2012. Additionally, the complaint notes that U.S. Patent Nos. 7,748,772; 7,887,120; 7,942,467; 7,942,469; and 7,942,471 underwent ex parte reexamination at the USPTO, during which certain claims were amended, and new claims were added and determined to be patentable. This history is cited as a basis for Plaintiff's willful infringement allegations and may influence claim scope through prosecution history estoppel.

Case Timeline

Date Event
2008-01-29 Earliest Priority Date (’772, ’120, ’467, ’469, ’471, ’351, ’017, ’474 Patents)
2010-07-06 U.S. Patent No. 7748772 Issues
2011-02-15 U.S. Patent No. 7887120 Issues
2011-05-17 U.S. Patent No. 7942467 Issues
2011-05-17 U.S. Patent No. 7942469 Issues
2011-05-17 U.S. Patent No. 7942471 Issues
2012-03-21 Prior litigation filed by Transtex against Laydon
2012-10-23 U.S. Patent No. 8,292,351 Issues
2013-05-28 U.S. Patent No. 8,449,017 Issues
2013-06-27 '772 Patent Reexamination Certificate Issues
2013-06-30 '467 Patent Reexamination Certificate Issues
2013-08-01 '469 Patent Reexamination Certificate Issues
2013-08-01 '471 Patent Reexamination Certificate Issues
2013-08-12 '120 Patent Reexamination Certificate Issues
2014-03-25 U.S. Patent No. 8,678,474 Issues
2016-01-01 WABCO acquires Laydon (approximate date based on "in 2016")
2017-08-24 Complaint Filing Date

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

U.S. Patent No. 7,748,772 - “Resilient Aerodynamic Trailer Skirts”

The Invention Explained

  • Problem Addressed: The patent describes that trailer skirts made of rigid materials and held by rigid brackets are vulnerable to damage from road obstacles, which can bend or break the skirts and their supports, reducing aerodynamic efficiency and increasing maintenance costs (’772 Patent, col. 1:25-44).
  • The Patented Solution: The invention is an aerodynamic skirt assembly featuring a skirt panel supported by a plurality of "resilient struts." These struts are designed to allow the skirt panel to bend or deflect significantly when impacted by an object—such as when turning a corner over a curb—and then return to its original aerodynamic position once the object is cleared (’772 Patent, col. 2:3-6; Fig. 13). This resilience is intended to prevent permanent damage and maintain fuel efficiency (’772 Patent, col. 7:31-44).
  • Technical Importance: This approach addresses the practical durability challenges of operating aerodynamic devices in the harsh environment underneath a commercial trailer, aiming to reduce lifecycle costs.

Key Claims at a Glance

  • The complaint asserts independent claims 1 and 13 (’772 Patent, Reexam. Cert., col. 1:24-50; Compl. ¶36).
  • Essential elements of reexamined Claim 1 include:
    • A resilient aerodynamic skirt with a skirt panel defining a front portion and a rear portion.
    • The front portion is adapted to be "laterally proximally mounted" and the rear portion "laterally distally mounted," defining a "curved portion" between them.
    • The skirt panel is adapted to bend away from its aerodynamic configuration upon impact and recover its position thereafter.
    • A "resilient strut" secures the panel to the trailer and is adapted to "sustain an elastic deformation without breaking" and "self-recover."

U.S. Patent No. 7,887,120 - “Aerodynamic Trailer Skirts”

The Invention Explained

  • Problem Addressed: The patent addresses the same problem as the ’772 Patent: the vulnerability of rigid trailer skirts to damage from road hazards, leading to reduced aerodynamic efficiency and increased operational costs (’120 Patent, col. 1:22-45).
  • The Patented Solution: This patent also discloses a skirt assembly using resilient struts to allow for panel deflection and recovery. It specifically claims a skirt panel made of a "substantially planar material" that is bent into its curved, aerodynamic shape upon installation on the trailer (’120 Patent, Reexam. Cert., col. 2:35-42). The design creates an air passage along the trailer's center that is bordered by the skirt panel, channeling airflow to reduce drag (’120 Patent, col. 1:56-62).
  • Technical Importance: The invention focuses on achieving a resilient and aerodynamic shape by stressing a planar material during installation, potentially simplifying manufacturing compared to pre-formed rigid panels.

Key Claims at a Glance

  • The complaint asserts at least independent claim 1 (’120 Patent, Reexam. Cert., col. 1:25-52; Compl. ¶46).
  • Essential elements of reexamined Claim 1 include:
    • An aerodynamic skirt with a panel made of a "substantially planar material adapted to be bent in an aerodynamic configuration" when mounted.
    • The panel includes a "curved portion" between its front and rear portions.
    • An air passage along the trailer's center is "substantially laterally bordered by the skirt panel."
    • A plurality of "resilient struts" adapted to bend from an original shape and self-recover.

U.S. Patent No. 7,942,467 - “Aerodynamic Skirt Support Member”

  • Technology Synopsis: This patent focuses on the structure of the resilient support member (strut) itself, describing it as having a trailer connecting portion, a skirt connecting portion, and an intermediate portion that allows for bending and recovery. The invention aims to provide a durable yet flexible connection between the trailer and the skirt panel (Compl. ¶15; ’467 Patent, Abstract).
  • Asserted Claims: At least Claim 1 (Compl. ¶54).
  • Accused Features: The complaint alleges that the "rubberized strut" used in Defendants' TrailerSkirt products embodies the claimed support member (Compl. ¶28, 54).

U.S. Patent No. 7,942,469 - “Aerodynamic Skirt Panel”

  • Technology Synopsis: This patent is directed to the aerodynamic skirt panel, describing its construction from a single sheet of material and its mounting configuration, including a curved portion between the front and rear sections. The focus is on the panel's ability to be resiliently secured by struts (Compl. ¶16; ’469 Patent, Abstract).
  • Asserted Claims: At least Claim 1 (Compl. ¶62).
  • Accused Features: The complaint accuses Defendants' flat panel trailer skirts of infringing, highlighting their front and rear portions and the use of resilient struts (Compl. ¶29, 62).

U.S. Patent No. 7,942,471 - “Aerodynamic Skirt Shape”

  • Technology Synopsis: This patent focuses on the specific shape of the aerodynamic skirt, claiming a configuration where the front portion has a front height that is shorter than the rear height of the rear portion. This tapered shape is part of the aerodynamic design (Compl. ¶17; ’471 Patent, Abstract).
  • Asserted Claims: At least Claim 1 (Compl. ¶70).
  • Accused Features: The complaint provides a photograph alleging to show that Defendants' trailer skirts have a front height shorter than the rear height (Compl. ¶30).

U.S. Patent No. 8,292,351 - “Resilient Strut for Aerodynamic Skirt”

  • Technology Synopsis: This patent details an aerodynamic skirt assembly where both the skirt panel and the resilient struts can sustain substantial elastic deformation and return to their original positions after impact. The claims emphasize the combined resiliency of both components (Compl. ¶18, 28; ’351 Patent, Abstract).
  • Asserted Claims: At least Claim 1 (Compl. ¶¶28, 33, 78).
  • Accused Features: The complaint accuses both the flat panel and wishbone-style skirts, alleging their panels and rubber struts are designed for elastic deformation and recovery (Compl. ¶¶28, 33).

U.S. Patent No. 8,449,017 - “Aerodynamic Skirt Resilient Member”

  • Technology Synopsis: This patent covers a resilient support member (strut) for an aerodynamic skirt that includes a shape variation adapted to change its mechanical strength and allow it to bend and recover from an applied load. The invention focuses on the engineered flexibility of the strut itself (Compl. ¶19; ’017 Patent, Abstract).
  • Asserted Claims: At least Claim 1 (Compl. ¶¶32, 86).
  • Accused Features: The complaint alleges that the struts used in Defendants' wishbone-style skirts, described as made of "high rubber," infringe this patent (Compl. ¶¶32, 86).

U.S. Patent No. 8,678,474 - “Self-repositioning Aerodynamic Skirt”

  • Technology Synopsis: This patent describes a self-repositioning skirt system where the resilient strut includes a shape variation that changes its mechanical strength, allowing it to sustain elastic deformation and self-recover its original shape after a load is removed. The invention centers on the strut's ability to facilitate the skirt's return to its aerodynamic position (Compl. ¶20; ’474 Patent, Abstract).
  • Asserted Claims: At least Claim 1 (Compl. ¶94).
  • Accused Features: The complaint accuses Defendants' flat panel skirts, which allegedly use rubberized struts that allow flexing, of infringing this patent (Compl. ¶¶28-29, 94).

III. The Accused Instrumentality

Product Identification

  • Defendants' "flat panel style" and "wishbone style" trailer skirts sold under the tradename TrailerSkirt®, including models TS248, TS259, and TS225 (Compl. ¶¶22, 23, 31). WABCO is alleged to market and sell a "substantially similar" trailer skirt (Compl. ¶25).

Functionality and Market Context

  • The complaint alleges the accused products are aerodynamic skirts mounted to the underside of a semi-trailer to reduce air drag and improve fuel savings (Compl. ¶28, 33). The skirts are comprised of one or more panels attached to the trailer's undercarriage via "resilient struts" made of "high rubber" (Compl. ¶28). The complaint provides an image showing how the tops of these struts attach to the trailer's I-beams (Compl. p. 8, Exhibit J). The complaint further alleges that this construction allows the skirts to "elastically deform" when impacted by an object, such as a street curb, and then return to their original position (Compl. p. 9). The photograph on page 9 of the complaint depicts an accused trailer skirt flexing as the trailer turns a corner (Compl. p. 9).

IV. Analysis of Infringement Allegations

U.S. Patent No. 7,748,772 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A resilient aerodynamic skirt ... comprising a skirt panel defining a front portion and a rear portion... Defendants' accused skirts include a front portion and a rear portion. ¶29 col. 3:11-14
the front portion being adapted to be laterally proximally mounted toward a forward portion of the trailer and the rear portion being adapted to be laterally distally mounted... The accused skirts are alleged to have a front portion adapted to be laterally proximally mounted and a rear portion adapted to be laterally distally mounted. ¶29 col. 3:11-17
the skirt panel defining a curved portion between the front portion and the rear portion when mounted on the trailer in an aerodynamic configuration... The accused skirts allegedly include a curved portion between the front and rear portions. The complaint provides a diagram highlighting this feature on the wishbone-style skirt. ¶29, ¶34 col. 10:19-21
the skirt panel being adapted to bend away from the aerodynamic configuration when contacting a foreign object and to recover its aerodynamic configuration thereafter... The accused skirts can allegedly "sustain substantial elastic deformation when impacted by a foreign object and to return substantially to the original position." A provided photograph shows a skirt deforming around a curb. p. 9 col. 10:21-26
wherein the resilient aerodynamic skirt comprises a resilient strut securing the skirt panel to the trailer... The accused skirts include a "plurality of resilient struts" made of "high rubber" that secure the skirt panel to the trailer. ¶28 col. 10:24-26
the resilient strut being adapted to bend and sustain an elastic deformation without breaking when the skirt panel bends away... and to self-recover... The resilient struts are allegedly "made of high rubber for extreme durability and two way flexibility" and are characterized as allowing flexing and returning to their original position. ¶28, p. 9 col. 10:26-30
  • Identified Points of Contention:
    • Scope Questions: A central question may be whether the term "curved portion" as defined in the patent, which describes a progressive curve toward the trailer's center, reads on the specific geometry of both the accused "flat panel" and "wishbone" style skirts. The complaint provides a diagram for the wishbone style but is less specific for the flat panel style (Compl. ¶29, ¶34).
    • Technical Questions: The analysis may depend on the degree of resiliency and recovery exhibited by the accused struts and panels. The court will need to determine if the accused products' ability to "flex" and "return" meets the specific functional requirements of "sustain[ing] an elastic deformation without breaking" and "self-recover[ing]" as claimed.

U.S. Patent No. 7,887,120 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
An aerodynamic skirt ... comprising: a skirt panel ... being made of a substantially planar material adapted to be bent in an aerodynamic configuration when mounted on the trailer... The complaint alleges infringement by Defendants' "flat panel" trailer skirts, but does not specify if they are planar before installation and bent into shape upon mounting. ¶23, ¶46 col. 2:4-7
the skirt panel including a curved portion between the front and rear portions when in the aerodynamic configuration... The accused skirts are alleged to include a "curved portion between the front and rear portions." ¶29 col. 1:63-65
wherein an air passage along the center of the trailer is substantially laterally bordered by the skirt panel... The complaint does not provide sufficient detail for analysis of this element. col. 1:56-59
and wherein the skirt panel is adapted to be secured to the trailer with a plurality of resilient struts adapted (a) to bend from an original shape... and (b) to self-recover... The accused skirts use "resilient struts" made of "high rubber" that allegedly allow the skirt assembly to deform and return to its original position after impact. ¶28, p. 9 col. 2:13-19
  • Identified Points of Contention:
    • Scope Questions: A key question for this patent will be the interpretation of "substantially planar material adapted to be bent in an aerodynamic configuration." The infringement analysis will depend on evidence of how the accused flat panel skirts are manufactured and installed—specifically, whether they are flat prior to installation and achieve their aerodynamic shape through the process of being mounted to the trailer.
    • Technical Questions: As with the ’772 Patent, the analysis will require a factual determination of whether the accused struts' performance characteristics meet the claimed functional requirements of bending and self-recovery from an "original shape."

V. Key Claim Terms for Construction

  • The Term: "resilient strut" (appearing in asserted claims of both the '772 and '120 patents)

  • Context and Importance: This term is the central technological feature distinguishing the invention from prior art rigid brackets. The dispute will likely focus on whether the accused rubber supports function in the manner required by the claims. Practitioners may focus on this term because the complaint repeatedly emphasizes the "high rubber" and "flexing" nature of the accused struts as the basis for infringement (Compl. ¶¶9, 28, 29).

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The specification describes the strut as being "made of a resilient material adapted to sustain significant deformation" (’772 Patent, col. 2:21-24). This functional language could support a broad reading that covers any support member capable of elastic deformation and recovery.
    • Evidence for a Narrower Interpretation: The detailed description discloses specific embodiments, such as a strut made of "composite material," "reinforced thermoplastic," and having a rectangular cross-section of about 4 millimeters thick that bends to a specific radius (’772 Patent, col. 8:26-52). A defendant may argue these specific examples limit the scope of "resilient strut" to structures with similar material and performance characteristics.

  • The Term: "curved portion" (appearing in asserted claims of both the '772 and '120 patents)

  • Context and Importance: This term defines the aerodynamic shape of the skirt. Infringement will depend on whether the geometry of the accused products falls within the scope of this term. The complaint explicitly alleges this feature is present in both the flat panel and wishbone styles, and provides a diagram highlighting it on the latter (Compl. ¶29, ¶34).

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: Claim 1 of the '772 patent broadly requires "a curved portion between the front portion and the rear portion." This suggests any non-linear transition could meet the limitation.
    • Evidence for a Narrower Interpretation: The specification describes the curve in more detail, stating the front portion "progressively proximally leans toward the center... of the road trailer" and that this "recessed front portion... improves the collection of the turbulent airflow" (’772 Patent, col. 5:21-26). A defendant may argue that "curved portion" is not merely geometric but requires a specific aerodynamic function tied to this progressive inward curve.

VI. Other Allegations

  • Indirect Infringement: The complaint does not contain specific allegations of indirect infringement (induced or contributory). It focuses on direct infringement under 35 U.S.C. §271(a) (Compl. ¶36).
  • Willful Infringement: The complaint alleges willful infringement for all asserted patents. The basis for this allegation is that Defendant Laydon had actual notice of Plaintiff's patent portfolio "at least as early as the publication date" of the patents due to an "existing relationship between Transtex and Laydon related to prior litigation for patent infringement" filed on March 21, 2012 (Compl. ¶¶41, 49, 57, 65, 73, 80, 89, 97). The willfulness claim appears to be based on alleged pre-suit knowledge stemming from this prior legal dispute.

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

  • A core issue will be one of claim scope shaped by prosecution history: Several of the lead patents underwent ex parte reexamination where claims were amended. The case may turn on whether the accused products, particularly their "rubberized struts," are functionally and structurally equivalent to the "resilient struts" as defined by the claims and narrowed during reexamination.
  • A key evidentiary question will be one of technical and functional equivalence: Does the accused products' ability to "flex" when hitting a curb, as depicted in the complaint, constitute the specific "elastic deformation without breaking" and "self-recover[y]" required by the claims, or is there a fundamental mismatch in the degree or mechanism of resiliency?
  • A central question for willfulness will be the impact of prior litigation: The case will explore whether the prior litigation between the parties provided Defendants with the requisite knowledge of the asserted patents to support a finding of willful infringement for their continued activities, potentially exposing them to enhanced damages.