DCT
2:19-cv-10250
Bestop Inc v. Webasto Thermo & Comfort North America Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Bestop, Inc. (Delaware)
- Defendant: Webasto Thermo & Comfort North America, Inc. (Michigan); Webasto-Edscha Cabrio USA Inc. (Michigan); and Webasto-Edscha Cabrio Mexico, S.A. de C.V. (Mexico)
- Plaintiff’s Counsel: Howard & Howard Attorneys PLLC
- Case Identification: 2:19-cv-10250, E.D. Mich., 01/25/2019
- Venue Allegations: Venue is alleged based on the Michigan-based defendants having regular and established places of business in the district and committing acts of infringement there. Venue over the Mexican defendant is based on its status as a foreign entity.
- Core Dispute: Plaintiff alleges that Defendants’ "SwapTop" and "ThrowBack" aftermarket soft tops for Jeep vehicles infringe five patents related to foldable soft panel top assemblies.
- Technical Context: The technology concerns the automotive aftermarket accessories market, specifically providing a convenient, retractable soft-top section for vehicles that typically have removable hard-top panels.
- Key Procedural History: The complaint alleges that Defendants observed Plaintiff's product in November 2015, prior to selling their own accused products. It also alleges that Defendants initially launched a product named "SwapTop" which was later renamed "ThrowBack" following a recall and warranty issues.
Case Timeline
| Date | Event |
|---|---|
| 2013-04-02 | Earliest Priority Date for all Patents-in-Suit (’356, ’888, ’630, ’921, ’684) |
| 2015-03-29 | Defendants' "SwapTop" product first disclosed |
| 2015-11-01 | Defendants allegedly observed Plaintiff's "Bestop Product" on or before this date |
| 2016-12-13 | U.S. Patent No. 9,517,684 ('684 Patent) Issued |
| 2016-12-31 | Defendants allegedly began trying to sell the "SwapTop" product around this time |
| 2017-01-10 | U.S. Patent No. 9,539,888 ('888 Patent) Issued |
| 2017-11-14 | U.S. Patent No. 9,815,356 ('356 Patent) Issued |
| 2017-12-31 | Defendants allegedly changed product name from "SwapTop" to "ThrowBack" |
| 2018-04-03 | U.S. Patent No. 9,931,921 ('921 Patent) Issued |
| 2018-08-14 | U.S. Patent No. 10,046,630 ('630 Patent) Issued |
| 2019-01-25 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,815,356 - "Soft Front Cockpit Cover"
- Patent Identification: U.S. Patent No. 9,815,356, "Soft Front Cockpit Cover," issued November 14, 2017.
The Invention Explained
- Problem Addressed: The patent family addresses the drawbacks of conventional vehicle roof systems. Hard tops are often bulky, heavy, and difficult to remove and store to achieve an "open air feel," while traditional soft tops may not integrate well or offer the same convenience. (’888 Patent, col. 1:39-68).
- The Patented Solution: The invention is a soft panel assembly designed to replace the front section of a vehicle's roof, particularly one with a rear hard top. It features a frame with door rails and a "pivotable portion" that allows a soft cover to be easily folded back, creating a sunroof-like opening without removing any components from the vehicle. A key feature is a rear header designed to create a weather-tight seal with the remaining hard top portion of the vehicle. (’356 Patent, Abstract; col. 4:7-43).
- Technical Importance: This technology provides a hybrid solution that combines the convenience of a convertible top with the structural integration of a hard top, targeting a market of vehicle owners seeking customization and ease of use. (’888 Patent, col. 2:5-17).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶35) and reserves the right to assert other claims (Compl. ¶41).
- Essential elements of Claim 1:
- A soft panel top assembly for a vehicle with a specific frame structure (windshield frame, side members, cross member).
- Two door rails attached to the vehicle.
- A pivotable portion pivotally connected to the at least two door rails at two pivot points on each door rail.
- A header connected to the pivotable portion, adapted to connect to the vehicle's windshield frame.
- A rear header operably coupled to the vehicle and in sealing engagement with a seal of a hardtop roof portion to provide a weather tight seal.
- A soft skin roof top cover operably connected to the header and rear header, where pivoting the pivotable portion moves the cover between open and closed positions.
U.S. Patent No. 9,539,888 - "Soft Front Cockpit Cover"
- Patent Identification: U.S. Patent No. 9,539,888, "Soft Front Cockpit Cover," issued January 10, 2017.
The Invention Explained
- Problem Addressed: As with the related patents, the invention seeks to overcome the inconvenience and storage issues associated with removing heavy, bulky hard top panels from sport-utility vehicles. (’888 Patent, col. 1:39-59).
- The Patented Solution: This patent describes a soft panel top assembly featuring side rail linkage assemblies that connect a front header to fixed door rails. This linkage system creates the pivot points, allowing a lightweight "pivotal portion" to fold back smoothly. The system is designed to be installed without modifying the vehicle's existing hardware, replacing the manufacturer's front cockpit panels. (’888 Patent, Abstract; col. 2:27-33).
- Technical Importance: The invention offers an integrated, easy-to-use alternative to removable hard panels, allowing for a quick transition between a closed, weatherproof cockpit and an open-air experience. (’888 Patent, col. 2:1-11).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶56) and reserves the right to assert other claims (Compl. ¶62).
- Essential elements of Claim 1:
- A soft panel top assembly for a vehicle with a specific frame structure.
- Two door rails attached to the side members of the vehicle.
- A pivotable portion pivotally connected to the at least two door rails.
- A header connected to the pivotable portion and adapted to selectively connect to the windshield frame.
- A rear header operably coupled to the side members and the cross member, in sealing engagement with a hardtop roof portion's seal to provide a weather tight seal.
- A soft skin roof top cover connected to the header and rear header, movable between a closed and open position by pivoting the pivotable portion.
Multi-Patent Capsule: U.S. Patent No. 10,046,630 - "Soft Front Cockpit Cover"
- Patent Identification: U.S. Patent No. 10,046,630, "Soft Front Cockpit Cover," issued August 14, 2018.
- Technology Synopsis: This patent discloses a foldable roof assembly intended to provide a quick "open air" effect. The invention centers on a specific mechanical arrangement comprising two fixed door rails, two side rails that pivotally connect to the door rails, and a first bow member connecting the side rails, all of which allows a soft cover to move between open and closed positions. (’630 Patent, Abstract; col. 2:1-17).
- Asserted Claims: Independent claim 1 is asserted (Compl. ¶77).
- Accused Features: The complaint alleges the entire ThrowBack product infringes, pointing specifically to its door rails, pivoting side rails, and first bow member that form the frame for the soft cover (Compl. ¶¶80-82).
Multi-Patent Capsule: U.S. Patent No. 9,931,921 - "Soft Front Cockpit Cover"
- Patent Identification: U.S. Patent No. 9,931,921, "Soft Front Cockpit Cover," issued April 3, 2018.
- Technology Synopsis: This patent focuses on the sealing mechanism and material of the rear header. It describes a soft panel top assembly where the rear header includes a sealing system to engage a hard top seal and is constructed from a "lightweight molded material," which can be a single piece or multiple pieces connected together, to ensure a weatherproof seal without excessive weight. (’921 Patent, Abstract; col. 2:21-41).
- Asserted Claims: Independent claim 1 is asserted (Compl. ¶98).
- Accused Features: The complaint accuses both the "SwapTop" and "ThrowBack" products, alleging their rear header assemblies are made of a lightweight molded material and include a sealing system that engages with the vehicle's hard top seal (Compl. ¶102). An image in the complaint contrasts the rear header portions of the two accused products (Compl. p.29).
Multi-Patent Capsule: U.S. Patent No. 9,517,684 - "Soft Front Cockpit Cover"
- Patent Identification: U.S. Patent No. 9,517,684, "Soft Front Cockpit Cover," issued December 13, 2016.
- Technology Synopsis: This patent details a specific pivot mechanism for a soft top assembly. The invention claims the use of two brackets, each connected to a respective door rail, which are then used to pivotally connect two side rails. This bracket-based connection creates the pivot point for the assembly's moving portion. (’684 Patent, Abstract; col. 4:1-10).
- Asserted Claims: Independent claim 20 is asserted (Compl. ¶119).
- Accused Features: Both the "SwapTop" and "ThrowBack" products are accused of infringing by allegedly using brackets to connect their pivoting side rails to their fixed door rails, thereby creating the claimed pivot point (Compl. ¶¶122-123). The complaint includes a visual comparison of the brackets on both accused products (Compl. p.36).
III. The Accused Instrumentality
Product Identification
- The accused products are the "SwapTop" and "ThrowBack" aftermarket soft top assemblies, sold by Defendants under the "Black Forest Gear by Webasto" brand name (Compl. ¶¶15, 21).
Functionality and Market Context
- The accused products are designed as replacements for the front roof panels on Jeep Wrangler vehicles, allowing users to have a retractable soft top over the front cockpit while retaining the rear hard top (Compl. ¶¶22, 37). The complaint alleges the products are installed using door rails, a pivoting frame, and a rear header that seals against the vehicle's hard top (Compl. ¶¶38-39). The complaint positions Plaintiff as the established market leader and alleges Defendants are a "relative newcomer" whose products directly compete with Plaintiff's (Compl. ¶¶11, 14-15). The complaint provides an image from Defendants' installation manual showing the "Openable panel top assembly" installed on a vehicle (Compl. p.10).
IV. Analysis of Infringement Allegations
'356 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A soft panel top assembly for a vehicle having a windshield frame with side members extending therefrom and a cross member operably connecting the side members adjacent to the rear of a front cockpit of the vehicle... | The ThrowBack Product is a soft panel top assembly for a Jeep vehicle, which has the recited frame structure. | ¶37 | col. 4:7-13 |
| ...two door rails attached to the vehicle; | The ThrowBack Product has two door rails that are attached to the vehicle. | ¶38 | col. 4:28-30 |
| ...a pivotable portion pivotally connected to the at least two door rails at two pivot points on each door rail; | The ThrowBack Product has a pivotable portion connected to the door rails at two pivot points. | ¶38 | col. 4:5-10 |
| ...a header connected to the pivotable portion and adapted to selectively connect to the vehicle; | The accused product has a header connected to the pivotable portion that connects to the vehicle's windshield frame. | ¶38 | col. 4:10-13 |
| ...a rear header operably coupled to the vehicle, said rear header in sealing engagement with a seal of a hardtop roof portion to provide a weather tight seal; | The ThrowBack Product has a rear header that creates a weather tight seal with the vehicle's hardtop. An image shows the "Rear header" and "Weather tight seal" (Compl. p.11). | ¶39 | col. 4:52-61 |
| ...and a cover that is a soft skin roof top cover, said cover operably connected to the header and rear header, where pivoting the pivotable portion allows the cover to move between a closed position and an open position. | The accused product has a soft cover connected to the header and rear header that moves between open and closed positions when the frame pivots. | ¶40 | col. 4:41-51 |
- Identified Points of Contention:
- Scope Questions: A central question may be the scope of "pivotable portion." The complaint alleges the entire moving assembly is the "pivotable portion," but a dispute could arise over whether this term is limited to the specific embodiments disclosed in the patent, such as the linkage system described in related patents.
- Technical Questions: The complaint alleges the accused product has "two pivot points on each door rail." Evidence will be required to establish that the accused product's mechanical connection functions as two distinct pivot points as contemplated by the patent, versus a single or different pivoting connection. The complaint provides a close-up image labeling these alleged points (Compl. p.10).
'888 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A soft panel top assembly for a vehicle having a windshield frame with side members extending therefrom and a cross member operably connecting the side members adjacent to the rear of a front cockpit of the vehicle... | The ThrowBack Product is a soft panel top assembly for a Jeep vehicle, which has the recited frame structure. | ¶58 | col. 4:1-6 |
| ...two door rails attached to the side members of the vehicle; | The ThrowBack Product is alleged to have two door rails that attach to the side members (sport bars) of the vehicle. | ¶59 | col. 4:59-61 |
| ...a pivotable portion pivotally connected to the at least two door rails; | The accused product has a "pivotable portion" connected to the door rails. | ¶59 | col. 4:20-22 |
| ...a header connected to the pivotable portion and adapted to selectively connect to the windshield frame; | The accused product's header is part of the pivoting assembly and latches to the windshield frame. | ¶59 | col. 4:48-51 |
| ...a rear header operably coupled to the side members and the cross member, said rear header in sealing engagement with a seal of a hardtop roof portion to provide a weather tight seal; | The accused product has a rear header that couples to the vehicle structure and seals against the hardtop. An image depicts the "Rear header" and "Weather tight seal" (Compl. p.17). | ¶60 | col. 2:21-27 |
| ...and a cover that is a soft skin roof top cover, said cover operably connected to the header and rear header, where pivoting the pivotable portion allows the cover to move between a closed position and an open position. | The ThrowBack Product is a soft top cover that moves with the pivoting frame between open and closed positions. | ¶61 | col. 2:11-17 |
- Identified Points of Contention:
- Scope Questions: A question may arise regarding the meaning of "operably coupled to the side members and the cross member" for the rear header. The precise nature of this coupling in the accused product versus the patent's disclosure could be a point of dispute.
- Technical Questions: Infringement will depend on whether the specific "side rail linkage assemblies" that constitute the "pivotable portion" in the patent's detailed description are found in the accused product, either literally or under the doctrine of equivalents. The complaint's allegations are general on this point, referring only to a "pivotable portion."
V. Key Claim Terms for Construction
Term: "pivotable portion"
(asserted in '356 Patent, Claim 1; '888 Patent, Claim 1)
- Context and Importance: This term defines the core moving part of the claimed invention. The outcome of the infringement analysis depends heavily on whether the accused product's folding frame assembly falls within the construction of this term. Practitioners may focus on this term because the patents describe specific linkage assemblies, and the dispute will likely center on whether the claim is limited to those structures.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term itself is general, and the summary of the invention in the '888 patent describes it functionally as a portion that "is lightweight and folds back without the operator needing to leave the vehicle" (’888 Patent, col. 2:3-5). This may support a construction not limited to a specific structure.
- Evidence for a Narrower Interpretation: The detailed description of the '888 patent explicitly defines the "pivotal portion" as comprising "two side rail linkage assemblies" which in turn include a "first link," "second link," and "third link" (’888 Patent, col. 4:20-24). A defendant may argue this detailed description limits the claim scope to this specific multi-link structure.
Term: "rear header"
(asserted in '356 Patent, Claim 1; '888 Patent, Claim 1)
- Context and Importance: This element forms the critical seal between the inventive soft top and the vehicle's existing hard top. Its definition is crucial for determining infringement, as the effectiveness and structure of this seal are central to the invention's utility.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Claim 1 of the '356 patent functionally requires the rear header to be in "sealing engagement with a seal of a hardtop roof portion to provide a weather tight seal." This functional language could support a broader construction covering any rear structure that achieves a seal.
- Evidence for a Narrower Interpretation: The specification of the related '630 patent describes the rear header as a "wireframe" (’630 Patent, Abstract). The '921 patent claims a rear header made of a "lightweight molded material" ('921 Patent, Claim 1). This may support an argument that the term is limited to specific, lightweight constructions rather than any generic rear bar or support.
VI. Other Allegations
- Indirect Infringement: The complaint alleges Defendants induce infringement by providing instructions on how to install and use the accused products on Jeep vehicles (Compl. ¶¶ 22, 42, 44). It further alleges contributory infringement, stating the products are not staple articles of commerce and are especially made for an infringing use (Compl. ¶45).
- Willful Infringement: Willfulness is alleged based on both pre- and post-suit conduct. The complaint alleges Defendants had pre-suit knowledge by having "observed the Bestop Product" before launching their own (Compl. ¶18), "adopted the Bestop patented design" (Compl. ¶49), and "are or should have been aware" of the patents since their issuance (Compl. ¶49). Post-suit knowledge is based on the filing of the complaint itself (Compl. ¶32).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can terms like "pivotable portion," which are described with highly specific multi-link structures in the patent specifications, be construed broadly enough to read on the accused product's pivoting frame, or will the claims be narrowed to their specific embodiments?
- A key evidentiary question will be one of mechanical correspondence: does the accused products' use of brackets to create a pivot point (as shown in complaint images for the '684 patent) literally satisfy the limitations of the asserted claims, or is there a technical distinction that will require the plaintiff to argue infringement under the doctrine of equivalents?
- A central question for damages will be knowledge and intent: can the plaintiff substantiate its allegation that the defendants saw the Bestop product and "adopted the Bestop patented design," thereby supporting a finding of willful infringement, or will the evidence suggest independent development in a competitive market?