Horizon Global Americas Inc v. Dutton Lainson Co

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Horizon Global Americas Inc. (Delaware)
  • Defendant: Dutton-Lainson Company (Nebraska)
  • Plaintiff’s Counsel: McDonald Hopkins LLC
• Case Identification: 2:17-cv-11747, E.D. Mich., 06/02/2017
• Venue Allegations: Plaintiff alleges venue is proper because Defendant has committed acts of infringement in the district, has a regular and established place of business in the district via its online store, and sells the accused products through partners like Amazon.com, Cabela's, and Gander Mountain that operate in the district.
• Core Dispute: Plaintiff alleges that Defendant’s trailer jack products infringe a patent related to improved jack assemblies.
• Technical Context: The technology concerns mechanical jack assemblies used to support and position trailer tongues, a common accessory in the consumer and commercial towing markets.
• Key Procedural History: The complaint alleges that Plaintiff provided Defendant with written notice of infringement on March 24, 2017. This pre-suit notice forms the basis for the willfulness allegation, as Defendant allegedly continued its infringing conduct after being notified of the patent.

Case Timeline

Date	Event
2007-07-16	U.S. Patent No. 8,523,148 Priority Date
2013-09-03	U.S. Patent No. 8,523,148 Issued
2017-03-24	Plaintiff provides written notice of infringement
2017-06-02	Complaint Filed

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

• Patent Identification: U.S. Patent No. 8,523,148, "Jack Assembly," issued September 3, 2013 (the “'148 Patent”).

The Invention Explained

• Problem Addressed: The patent addresses common issues with trailer jacks, including wear and tear on telescoping components, the difficulty of operating the jack due to binding or galling, and the need for a single jack assembly to mount to various sizes of trailer tongues. (Compl. ¶11; ’148 Patent, col. 4:22-32, col. 7:13-16).
• The Patented Solution: The invention describes a jack assembly with an inner and outer telescoping tube. A key feature is the use of one or more bushings positioned between the tubes to prevent direct metal-on-metal contact, which maintains axial alignment, reduces the mechanical effort needed for operation, and limits wear. (’148 Patent, col. 3:19-27, col. 4:7-16, Fig. 7). The solution also includes a pivot assembly with a rotatable attachment bracket, allowing it to be secured to trailer tongues of different dimensions. (’148 Patent, col. 7:13-24, Fig. 15).
• Technical Importance: The use of precisely shaped bushings to manage alignment and friction in telescoping assemblies represents an improvement aimed at extending the service life and enhancing the user experience of a common mechanical product. (’148 Patent, col. 4:49-53).

Key Claims at a Glance

• The complaint asserts infringement of at least independent claim 15. (Compl. ¶17).
• Claim 15 (Apparatus):
  • A first tube having a cross-sectional shape.
  • A second tube telescopingly engaged with the first tube.
  • A telescoping mechanism to position the first tube relative to the second tube.
  • A first bushing having a "generally corresponding shape" as the cross-section of the first tube.
  • The first bushing is attached to the first tube and positioned between the first and second tubes such that the tubes "do not contact during telescoping."
• The prayer for relief seeks a finding of infringement of "at least claim 15," suggesting the possibility that other claims may be asserted later. (Compl. ¶26(A)).

III. The Accused Instrumentality

Product Identification

The complaint identifies the accused instrumentality as the "DLx Tongue Jack (Product ID 22210)" and collectively refers to it and other unnamed products as the "Infringing Products." (Compl. ¶13).

Functionality and Market Context

The complaint describes the accused products as "trailer jacks" used with towed vehicles. (Compl. ¶13, ¶19). It alleges that their only commercial use is as a jack assembly for a towed vehicle, which is an infringing use. (Compl. ¶19-21). The complaint does not provide further technical detail on the operation or internal components of the accused DLx Tongue Jack.

IV. Analysis of Infringement Allegations

The complaint alleges that the accused products are covered by at least claim 15 of the ’148 Patent, referencing an "Exhibit 1" claim chart to support this assertion. (Compl. ¶17). As Exhibit 1 was not attached to the publicly filed complaint, a detailed, element-by-element analysis based on Plaintiff's specific infringement theories is not possible. The narrative theory is that Defendant's sale and use of the DLx Tongue Jack constitutes direct infringement of claim 15. (Compl. ¶18).

No probative visual evidence provided in complaint.

Identified Points of Contention

• Technical Questions: A central factual question will be whether the accused DLx Tongue Jack contains an internal structure that meets the definition of the claimed "bushing." Specifically, evidence will be required to determine if the accused product has a component that is (1) attached to one tube, (2) positioned between the tubes, and (3) functions to prevent the tubes from contacting each other during telescoping, as required by claim 15.
• Scope Questions: The case may raise a question of claim scope regarding the term "do not contact." Defendant may argue that incidental or minor contact occurs in its product, while Plaintiff may argue the term requires only that the bushing substantially prevents the kind of load-bearing contact that causes galling and wear.

V. Key Claim Terms for Construction

"bushing"

• Context and Importance: This term is the central technical feature of claim 15. The infringement analysis will depend entirely on whether the accused product contains a structure that qualifies as a "bushing." Practitioners may focus on this term because its construction will determine whether a wide range of internal guide or sleeve components read on the claim.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification describes the bushing in functional terms, stating it is "positioned between the tubes so that the tubes do not touch one another." (’148 Patent, col. 2:45-48). This could support an interpretation covering any component that serves this separating function.
  • Evidence for a Narrower Interpretation: The specification describes specific embodiments where the bushings are made from "glass-reinforced nylon" or "polyoxymethylene" and are secured with fasteners through apertures. (’148 Patent, col. 5:3-9, col. 3:5-10). The figures show bushings with specific, non-uniform contours corresponding to the tube shapes. (’148 Patent, Figs. 7, 8A, 9A). This could support a narrower construction limited to components with similar material properties or structural characteristics.

"generally corresponding shape"

• Context and Importance: Claim 15 requires the bushing to have a shape that "generally correspond[s]" to the tube's cross-section. The degree of similarity required by "generally corresponding" is a classic claim construction question.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The use of the word "generally" suggests that an exact or perfect match is not required, allowing for some tolerance or variation in the fit between the bushing and the tube.
  • Evidence for a Narrower Interpretation: Figures 5, 6, and 7 depict tubes with specific, non-circular, and somewhat complex cross-sections. An argument could be made that for the bushing to "correspond" and properly maintain alignment as described, its shape must closely track these specific contours, rather than being a simple, generic sleeve. (’148 Patent, Fig. 7).

VI. Other Allegations

Indirect Infringement

The complaint alleges both induced and contributory infringement. The inducement claim is based on allegations that Defendant, with knowledge of the patent, "intentionally and actively induced end users" and "distributors, retailers, and other resellers" to infringe. (Compl. ¶22-23). The contributory infringement claim is based on the allegation that the accused products have "no substantial non-infringing uses." (Compl. ¶24).

Willful Infringement

The willfulness allegation is based on pre-suit knowledge. The complaint states that Plaintiff's counsel sent a written notice of infringement to Defendant on March 24, 2017, and that Defendant continued to sell the accused products thereafter "in a willful way." (Compl. ¶15, ¶25).

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

The resolution of this dispute will likely depend on the court's answers to two primary questions:

1. A core issue will be one of claim construction and factual proof: Can Plaintiff demonstrate that the accused DLx Tongue Jack contains an internal component that meets all the structural and functional requirements of the claimed "bushing," particularly the requirement that it prevents the jack's inner and outer tubes from making contact during telescoping?
2. A key question on damages will be one of willfulness: Did the Defendant's continued sales after receiving a notice of infringement in March 2017 constitute willful, deliberate infringement, potentially exposing it to enhanced damages?