DCT

2:18-cv-12869

Tecnomatic Spa v. Atop Spa

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:18-cv-12869, E.D. Mich., 09/14/2018
  • Venue Allegations: Venue is alleged to be proper for the foreign defendants (ATOP S.p.A. and Magneti Marelli S.p.A.) as they are not incorporated in any U.S. state. For the domestic defendants, venue is based on their alleged residence in the district by maintaining offices and being organized under Michigan law, as well as the occurrence of sales of the accused products within the district.
  • Core Dispute: Plaintiff alleges that Defendants’ methods for manufacturing electric motor stators, and the resulting stators incorporated into hybrid RAM 1500 trucks, infringe five of its U.S. patents.
  • Technical Context: The technology concerns automated, high-volume manufacturing methods and resulting structures for electric motor stators that use high-efficiency, rectangular "hairpin" windings, a key component for the automotive industry's electric and hybrid vehicle sector.
  • Key Procedural History: The complaint alleges that Defendants had pre-suit knowledge of the patents-in-suit due to parallel patent litigation between the parties in Italy (the "Milan Action" and "Rome Action"). These foreign proceedings and related communications, including an alleged indemnification agreement between ATOP and Magneti Marelli, are cited as a basis for the willful infringement claims.

Case Timeline

Date Event
2007-03-22 U.S. Patent No. 7,941,910 Priority Date
2007-07-20 U.S. Patent No. 8,215,000 & 9,300,193 Priority Date
2011-01-04 U.S. Patent No. 8,826,513 Priority Date
2011-05-17 U.S. Patent No. 7,941,910 Issue Date
2011-07-07 U.S. Patent No. 8,922,078 Priority Date
2012-07-10 U.S. Patent No. 8,215,000 Issue Date
2014-09-09 U.S. Patent No. 8,826,513 Issue Date
2014-12-30 U.S. Patent No. 8,922,078 Issue Date
2015-10-20 ATOP allegedly sends letter to Magneti Italy regarding patent rights
2016-03-29 U.S. Patent No. 9,300,193 Issue Date
2016-10-05 ’910 Patent allegedly cited during prosecution of an ATOP patent
2017-06-28 ATOP allegedly cited ’910 Patent in an Information Disclosure Statement
2017-10-05 Defendants allegedly notified of patents in Italian litigation
2018-01-23 Tecnomatic allegedly filed lawsuit against Defendants in Italy
2018-04-24 Magneti Italy allegedly sought to enforce indemnity against ATOP
2018-09-14 Complaint Filing Date

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

U.S. Patent No. 7,941,910 - "Method for Removing Winding Conductors from a Twisting Machine and Placing Them in a Rotor Stator Stack"

The Invention Explained

  • Problem Addressed: The patent’s background section describes prior art methods for producing stator windings with efficient flat or square wire as slow and labor-intensive, requiring conductors to be handled and inserted one at a time, making the process unsuitable for mass production (’910 Patent, col. 1:41-61).
  • The Patented Solution: The invention is an automated method where a "clamping assembly" with inner and outer "fingers" simultaneously grips an entire array of pre-formed winding conductors from a twisting fixture. The assembly then moves as a unit to insert the conductors into the stator core, automating a critical and previously manual step in the manufacturing process (’910 Patent, Abstract; col. 2:20-33).
  • Technical Importance: This automation technology enabled the high-volume production of electric motors using more efficient flat-wire windings, a key development for the automotive industry (’910 Patent, col. 1:55-61).

Key Claims at a Glance

  • The complaint asserts infringement of one or more claims, with independent claim 1 being representative (Compl. ¶40).
  • The essential elements of independent claim 1 include:
    • Providing a plurality of rectangular winding conductors with legs separated by a predetermined distance.
    • Placing a clamping assembly, which has a plurality of outer and inner fingers, adjacent to a twisting fixture holding the conductors.
    • Moving the inner fingers radially outward and the outer fingers radially inward to project between the legs of the conductors.
    • Separating the clamping assembly from the twisting fixture.
    • Bringing the clamping assembly adjacent to the rotor or stator to insert the free ends of the conductors.
    • Moving the inner and outer fingers away to release the conductors.
  • The complaint reserves the right to assert other claims during litigation (Compl. ¶42).

U.S. Patent No. 8,215,000 - "Methods for Twisting Rotor and Stator Ends"

The Invention Explained

  • Problem Addressed: The patent addresses the need to bend different conductor ends by different amounts (differential twisting) in an automated process. This is necessary to create complex connections for power leads or different electrical phases, which was difficult with prior art methods (’000 Patent, col. 1:35-55).
  • The Patented Solution: The invention uses a bending fixture composed of multiple concentric, rotatable rings ("pocket members"). The key innovation is the use of a "lost motion member" associated with at least one pocket. This mechanism introduces a delay in rotation for specific conductors, causing them to be bent at a lesser angle than others during the same automated twisting operation (’000 Patent, Abstract; col. 3:23-45).
  • Technical Importance: This method allows for the automated, high-precision formation of complex, non-uniform winding patterns required for advanced electric motors in a single, efficient operation (’000 Patent, col. 1:56-62).

Key Claims at a Glance

  • The complaint asserts infringement of one or more claims, with independent claim 1 being representative (Compl. ¶58).
  • The essential elements of independent claim 1 include:
    • Providing a bending fixture with four pocket members, where at least one has a "lost motion member" that allows for rotation through a second, smaller angle relative to a first angle.
    • Supporting a stator with conductor ends extending into the pockets of the fixture.
    • Driving the fixture to rotate the first and third pocket members relative to the second and fourth through a first limited angle to bend most conductors.
    • Simultaneously, the conductors in the lost motion member are bent by an angle equal to the first angle minus the second (smaller) angle.
  • The complaint reserves the right to assert other claims during litigation (Compl. ¶60).

U.S. Patent No. 8,826,513 - "Method for Twisting End Portions of Bar Conductors, in Particular for Bar Windings of Electric Machines"

  • Patent Identification: U.S. Patent No. 8,826,513, “Method for Twisting End Portions of Bar Conductors, in Particular for Bar Windings of Electric Machines,” issued September 9, 2014 (Compl. ¶26).
  • Technology Synopsis: The patent discloses a method for achieving non-uniform twisting of bar conductors using a fixture with a pocket member that includes a main structure and a secondary structure. The secondary structure can translate axially relative to the main structure, which allows conductors held in the secondary structure to be twisted differently from those held in the main structure (’513 Patent, Abstract).
  • Asserted Claims: One or more claims, including independent claim 1 (Compl. ¶78).
  • Accused Features: The complaint alleges the accused production line utilizes nesting pocket members where a secondary structure is movably mounted relative to a main structure to achieve "differential twisting" (Compl. ¶¶ 83-84).

U.S. Patent No. 8,922,078 - "Stator for an Electric Machine"

  • Patent Identification: U.S. Patent No. 8,922,078, “Stator for an Electric Machine,” issued December 30, 2014 (Compl. ¶28).
  • Technology Synopsis: This patent claims a stator apparatus, not a method. It describes a specific bar winding configuration characterized by special conductors, including different types of "jumpers," used to create connections between the free ends of basic conductors. A key feature is that jumpers connect conductors in different layers, with conductor ends being bent at different pitches to create a compact and flexible connection scheme (’078 Patent, Abstract).
  • Asserted Claims: One or more claims, including independent claim 1 (Compl. ¶96).
  • Accused Features: The complaint alleges the accused stators used in RAM 1500 trucks contain a bar winding with a plurality of basic and special conductors, including jumpers that connect conductor layers where free ends are bent at different pitches (Compl. ¶¶ 99-101).

U.S. Patent No. 9,300,193 - "Methods and Apparatus for Twisting Rotor and Stator Conductor Ends"

  • Patent Identification: U.S. Patent No. 9,300,193, “Methods and Apparatus for Twisting Rotor and Stator Conductor Ends,” issued March 29, 2016 (Compl. ¶30).
  • Technology Synopsis: As a continuation of the application leading to the ’000 Patent, this patent further details a method for differential twisting. It claims a method using four concentric rings where the first and third rings rotate relative to the second and fourth. It explicitly claims a "lost motion pocket" on one of the rings that rotates through a second, smaller angle, enabling a differential bend (’193 Patent, Abstract; Claim 1).
  • Asserted Claims: One or more claims, including independent claim 1 (Compl. ¶112).
  • Accused Features: The accused production equipment allegedly uses four circularly distributed rings and a "lost motion pocket" to rotate certain conductors through a smaller angle than others, thereby performing the claimed differential twisting method (Compl. ¶¶ 116, 118).

III. The Accused Instrumentality

Product Identification

  • The accused instrumentalities are the manufacturing methods embodied in stator production equipment designed by ATOP S.p.A., and the resulting electric motor stators produced by that equipment and supplied by Magneti Marelli entities (Compl. ¶¶ 2, 21, 43). These stators are allegedly incorporated into the "E-Motor AS170" electric motor used in certain hybrid RAM® 1500 pickup trucks sold in the United States (Compl. ¶¶ 2, 41).

Functionality and Market Context

  • The accused equipment is an automated production line that performs complex bending and twisting of rectangular "hairpin" conductors to form stators (Compl. ¶¶ 43-44, 61-64). The complaint provides a photograph of the accused stator production equipment at Magneti Italy's plant, showing a large, circular twisting fixture with numerous radial slots (Compl. ¶43). The complaint alleges this equipment utilizes specific mechanisms like clamping assemblies with inner and outer fingers, and multi-ring fixtures with lost-motion capabilities, to achieve the patented manufacturing processes (Compl. ¶¶ 44-48, 62-66). The resulting stators are alleged to be crucial components for the powertrain of a major hybrid vehicle model, placing them in the high-volume automotive supply chain (Compl. ¶41).

IV. Analysis of Infringement Allegations

’910 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A method of removing from a twisting fixture and inserting into a rotor or stator a plurality of rectangular winding conductors... The accused method, performed by ATOP's equipment, involves removing conductors from a twisting fixture and inserting them into a stator stack (Compl. ¶44). ¶44 col. 4:38-44
...placing a clamping assembly adjacent the twisting fixture, the clamping assembly having a plurality of outer fingers equally angularly spaced about the center axis of the twisting fixture... and a plurality of inner fingers equally angularly spaced about the center of the twisting fixture... ATOP's equipment is alleged to use a clamping assembly with "inner fingers and outer fingers" (Compl. ¶44). The complaint includes a technical drawing, allegedly of an "inner finger" used in the infringing equipment, showing a complex machined part (Compl. ¶45). ¶¶44-45 col. 2:20-25
...moving the inner fingers radially outward and the outer fingers radially inward to project between legs of the winding conductors and between the integral connections of the legs and the twisting fixture... The infringing equipment allegedly uses its inner and outer fingers to "grip the conductors as recited in the claims" (Compl. ¶44). ¶44 col. 3:64-col. 4:2
...separating the clamping assembly and the twisting fixture, and with the center axes of the clamping assembly and the rotor or stator aligned... bringing the clamping assembly adjacent the rotor or stator to insert free ends of the winding conductors into the rotor or stator... The method performed by the accused equipment inserts the conductors into a stator stack which is then supplied to Chrysler for installation in hybrid RAM® 1500 pickup trucks (Compl. ¶44). ¶44 col. 4:26-34

’000 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
...providing a bending fixture having a plurality of pockets circularly distributed in four pocket members comprising two pairs of adjacent pocket members, each concentric with an axis of the bending fixture... The accused equipment allegedly includes a method of bending conductors using "four circularly distributed pocket members" (Compl. ¶62). An exploded-view diagram from Italian litigation, included in the complaint, illustrates the accused machine's use of four concentric ring structures labeled "SCHIERA ESTERNA," "SCHIERA INTERMEDIA ESTERNA," "SCHIERA INTERMEDIA INTERNA," and "SCHIERA INTERNA" (Compl. ¶63). ¶¶62-63 col. 3:4-10
...one of the pocket members in each pair of adjacent pocket members having a lost motion member associated therewith defining at least one pocket... and being rotatable about the axis with respect to the respective pocket member through a second limited angle, the second limited angle being less than the first limited angle... The complaint alleges that one pocket member in each pair includes a "lost motion member" that allows certain conductors to be twisted at a lesser angle than others (Compl. ¶64). The complaint further cites an admission by ATOP from an Italian proceeding that its machine "features twist tooling...such as to allow a differential twisting" (Compl. ¶64). A technical drawing allegedly of a lost motion member is also provided (Compl. ¶66). ¶64, ¶66 col. 3:23-45
...driving the bending fixture... so as to rotate the first and third of the four pocket members through the first limited angle relative to the second and fourth... to simultaneously bend the free ends of a plurality of the rectangular motor winding conductors through the first limited angle... The twisting machine designed by ATOP allegedly "rotates the first and third pocket members through a first limited angle relative to the second and fourth pocket members to simultaneously bend the free ends of the conductors" (Compl. ¶68). ¶68 col. 4:28-34

Identified Points of Contention

  • Scope Questions: A primary question will be whether the mechanisms in the accused ATOP equipment, which the complaint alleges achieve "differential twisting," meet the specific structural and functional limitations of the claimed "lost motion member." The dispute may focus on whether ATOP's design is merely an alternative way to achieve a similar result or if it is the same as, or equivalent to, the specific pin-in-slot or axially translating structures disclosed in the patents.
  • Technical Questions: The infringement case relies heavily on photographs, admissions, and technical drawings obtained from foreign litigation and plant visits. A central technical question for the court will be whether the evidence produced in U.S. discovery confirms that the accused production line operates precisely as alleged. For example, for the ’910 Patent, does the clamping assembly’s motion strictly conform to the claimed "radially outward" and "radially inward" movements, or does it employ a different clamping action?

V. Key Claim Terms for Construction

Term: "lost motion member" (’000 Patent, Claim 1)

  • Context and Importance: This term is the central inventive concept of the ’000 Patent, enabling differential twisting. The outcome of the infringement analysis for this patent, and the related ’193 Patent, will depend heavily on how this term is construed. Practitioners may focus on this term because it appears to be the primary point of novelty, and its definition will determine whether ATOP's mechanism for achieving differential twisting is covered by the claim.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification describes the function of the member as creating a rotational delay: "pockets 38' will at least initially not be positively driven... Pins 42, which are fastened to the same structure as pockets 38, rotate therewith in slots 48... until reaching the ends of the slots, after which the structure supporting pockets 38' begins to rotate" (’000 Patent, col. 3:36-45). A party could argue this functional description supports a construction covering any mechanism that introduces a controlled rotational delay between sets of pockets.
    • Evidence for a Narrower Interpretation: The patent discloses a specific embodiment for the lost motion member, comprising protrusions (40), coil springs (44), and pins (42) that travel within slots (48) in the main ring structure (’000 Patent, FIG. 4). A party could argue the term should be limited to this, or a structurally similar, pin-in-slot mechanism.

Term: "moving the inner fingers radially outward and the outer fingers radially inward" (’910 Patent, Claim 1)

  • Context and Importance: This phrase defines the specific clamping action of the invention. Infringement will depend on whether the accused machine's clamping fingers move in this precise, opposing radial manner. Practitioners may focus on this term because the specific kinematics of the accused machine's clamping mechanism, versus the claim language, is a likely point of dispute.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification describes the overall purpose as to "properly grip and space the conductor wires" (’910 Patent, col. 4:1-2). This might support a broader interpretation where any finger motion that achieves this gripping and spacing function is sufficient.
    • Evidence for a Narrower Interpretation: The claim language is highly specific about the vectors of motion ("radially outward" and "radially inward"). The detailed description explains that separate mechanical members (e.g., 58, 60, 66, 68 in FIG. 9) drive the inner and outer fingers, suggesting a specific, coordinated mechanical action that a court might find limits the scope of the claim (’910 Patent, col. 3:51-68).

VI. Other Allegations

Indirect Infringement

  • The complaint alleges that ATOP induced infringement by designing, building, and providing ongoing support for the accused production equipment used by Magneti Marelli, with knowledge of Tecnomatic's patents and the intent that Magneti Marelli would use the equipment to perform the patented methods (Compl. ¶¶ 52, 72, 90, 124). For the ’078 apparatus patent, the Magneti Marelli defendants are accused of contributory infringement for importing and selling stators that are a material part of the invention, have no substantial non-infringing use, and are known to be especially adapted for use in an infringing manner (Compl. ¶106).

Willful Infringement

  • The complaint alleges willful infringement based on Defendants’ alleged pre-suit knowledge of the patents. The basis for this knowledge is extensive and includes documents exchanged in parallel Italian litigation, a letter from ATOP to Magneti Italy in 2015 that allegedly discussed Tecnomatic's patent rights, and instances where the patents-in-suit were cited during the prosecution of ATOP's own patent applications (Compl. ¶¶ 32-38, 55, 75, 93, 109, 127).

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

  • A central issue will be one of claim construction and technical scope: will key terms like "lost motion member" be interpreted broadly based on their described function (enabling differential twisting) or narrowly based on the specific mechanical embodiments disclosed in the patents (e.g., a pin-in-slot mechanism)? The viability of the infringement claims hinges on whether the accused equipment's mechanisms fall within the construed scope of these terms.
  • A second key question will concern evidentiary sufficiency and international comity: the plaintiff's case is substantially built upon allegations and evidence derived from parallel litigation in Italy. A major hurdle will be whether discovery in the U.S. action can validate these allegations and prove that the accused production lines operate precisely as depicted in the foreign-sourced documents and admissions.
  • Finally, the case presents a complex question of joint and several liability across an international supply chain. The court will need to determine the respective liability of the Italian equipment manufacturer (ATOP) and the manufacturing and distribution entities (Magneti Marelli) under theories of direct infringement, importation, inducement, and contributory infringement.