DCT
1:22-cv-00857
ZPE Licensing Inc v. Zzperformance LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: ZPE Licensing Inc. (California)
- Defendant: ZZPerformance LLC (Michigan) and Uzoma Iwuagwu
- Plaintiff’s Counsel: Butzel Long; Fox Rothschild LLP
- Case Identification: 1:22-cv-00857, W.D. Mich., 09/16/2022
- Venue Allegations: Venue is alleged to be proper in the Western District of Michigan because Defendant ZZPerformance LLC's principal place of business is in the district and individual Defendant Uzoma Iwuagwu resides in the district.
- Core Dispute: Plaintiff alleges that Defendant’s supercharger pulley puller tool infringes a patent related to a specialized mechanical apparatus for removing pulleys from shafts.
- Technical Context: The technology concerns specialized automotive service tools designed to remove press-fit pulleys from superchargers, particularly in the confined space of a modern engine bay.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendant with pre-suit notice of infringement via a cease and desist letter on or about June 16, 2020. Subsequent to the filing of this complaint, the U.S. Patent and Trademark Office issued an Ex Parte Reexamination Certificate on March 26, 2024, which cancelled all original claims of the asserted patent, including the two claims asserted in this action (Claims 2 and 8). The certificate added new, amended claims. This post-filing development fundamentally alters the basis of the lawsuit, as the specific claims asserted in the original complaint are no longer valid. The patent is also subject to a pending reissue application.
Case Timeline
| Date | Event |
|---|---|
| 2014-04-11 | '156 Patent Priority Date |
| 2015-01-13 | '156 Patent Issue Date |
| 2020-06-16 | Alleged Pre-Suit Notice via Cease and Desist Letter |
| 2022-09-16 | Complaint Filing Date |
| 2024-01-17 | Reissue Application Filed for '156 Patent |
| 2024-03-26 | Reexamination Certificate Issued, Cancelling Asserted Claims |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,931,156 - "Puller for Pully of Supercharger"
- Patent Identification: U.S. Patent No. 8,931,156, "Puller for Pully of Supercharger," issued January 13, 2015.
The Invention Explained
- Problem Addressed: The patent describes the difficulty of removing pulleys from shafts within the tight spacing of an automobile engine, a task that is often labor-intensive and may require the removal of other components. (’156 Patent, col. 1:18-29).
- The Patented Solution: The invention is a specialized tool designed to simplify this process. It comprises a frame with a proximal and a distal plate that are positioned on either side of the pulley. The distal plate has an opening that allows it to engage the back of the pulley while clearing the supercharger shaft. A central push rod is threaded through the proximal plate; as it is rotated, it pushes against the end of the shaft, creating an opposing force that pulls the distal plate—and thus the pulley—off the shaft. (’156 Patent, col. 1:31-42, Fig. 3).
- Technical Importance: The described tool provides a mechanism for applying controlled and substantial pulling force to a press-fit component in a mechanically constrained environment, potentially reducing labor time and the need to disassemble surrounding engine parts. (’156 Patent, col. 1:23-29).
Key Claims at a Glance
- The complaint asserts infringement of independent claims 2 (apparatus) and 8 (method).
- Independent Claim 2 recites a puller comprising:
- A distal plate with an opening for a supercharger shaft that is smaller than the pulley, and having three attachment points.
- A proximal plate with three attachment points aligned with those on the distal plate, and a threaded central hole.
- Three elongate frame members connecting the two plates.
- A push rod threadably engaged with the proximal plate's hole, having a portion for being turned by a wrench and a distal portion to engage the shaft.
- A functional limitation wherein the distal portion of the push rod is "independently rotatable with respect to the wrench engaging portion."
- Independent Claim 8 recites a method for removing a pulley by:
- Inserting the pulley between the puller's proximal and distal plates.
- Inserting the supercharger shaft through the opening in the distal plate.
- Rotating the push rod.
- Engaging the distal portion of the push rod with the shaft's proximal end.
- Pushing the pulley off the shaft with the distal plate.
- The complaint alleges infringement "without limitation" of these claims, suggesting the possibility that other claims could be asserted. (Compl. ¶18).
III. The Accused Instrumentality
Product Identification
- The "ZZP Supercharger Pulley Puller." (Compl. ¶13).
Functionality and Market Context
- The complaint alleges the accused product is an aftermarket automotive tool sold on Defendant's website and on eBay. (Compl. ¶13). The allegations describe the tool as comprising a distal plate, a proximal plate, three frame members, and a push rod, with each component allegedly corresponding to a limitation of the asserted claims. (Compl. ¶¶19-27).
- No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
'156 Patent Infringement Allegations (Claim 2 - Apparatus)
| Claim Element (from Independent Claim 2) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a distal plate having an opening sufficiently large to receive the shaft...the opening being smaller than a distal end of the pulley, the distal plate having three attachment points... | The accused puller has a distal plate with an opening large enough for a supercharger shaft but smaller than the pulley's distal end, and three attachment points. | ¶19-21 | col. 6:46-51 |
| a proximal plate having three attachment points...in alignment with the attachment points of the distal plate, the proximal plate having a threaded hole axially aligned to the central axis... | The accused puller has a proximal plate with three attachment points aligned with the distal plate's points and a central hole for a push rod. | ¶22, ¶24 | col. 6:52-58 |
| three elongate frame members...attached to the three attachment points of the distal plate [and] the proximal plate; | The accused puller has three frame members attached to the distal and proximal plates. | ¶23 | col. 6:59-65 |
| a push rod threadably engaged to the threaded hole of the proximal plate, the push rod having a wrench engaging portion...and a distal portion sized and configured to engage a proximal end of the shaft... | The accused puller has a threaded push rod with a wrench engaging portion and a distal portion configured to engage a supercharger shaft. | ¶24-25 | col. 7:1-5 |
| wherein the distal portion of the push rod is independently rotatable with respect to the wrench engaging portion. | The accused puller's push rod has a distal portion that is independently rotatable with respect to the wrench engaging portion. | ¶27 | col. 7:42-45 |
'156 Patent Infringement Allegations (Claim 8 - Method)
| Claim Element (from Independent Claim 8) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| inserting the pulley between proximal and distal plates of a puller; | Defendant allegedly instructs customers to insert the pulley between the plates of the accused tool. | ¶29 | col. 8:20-22 |
| inserting the shaft...into an opening of a distal plate of the puller; | Defendant allegedly instructs customers to insert the shaft into the distal plate's opening. | ¶29 | col. 8:23-26 |
| rotating a push rod attached to a proximal plate of the puller; | Defendant allegedly instructs customers to rotate the push rod attached to the proximal plate. | ¶29 | col. 8:27-28 |
| engaging a distal portion of the push rod with a proximal end of the shaft; | Defendant allegedly instructs customers to engage the push rod with the shaft end. | ¶29 | col. 8:29-31 |
| pushing the pulley off of the shaft with the distal plate. | Defendant allegedly instructs customers to push the pulley off the shaft using the tool. | ¶29 | col. 8:32-33 |
Identified Points of Contention
- Technical Question: A likely point of dispute for apparatus Claim 2 is whether the accused product's push rod actually has a distal portion that is "independently rotatable" from the main threaded body, as alleged. (Compl. ¶27). The complaint does not provide evidence, such as a diagram or photograph, to substantiate this allegation of a specific, multi-part construction.
- Evidentiary Question: For method Claim 8, which is asserted under a theory of induced infringement, the central issue will be the content of Defendant's instructions. The case may turn on whether Defendant's user manuals or other materials explicitly direct users to perform every step of the claimed method. (Compl. ¶29).
V. Key Claim Terms for Construction
- The Term: "independently rotatable with respect to the wrench engaging portion"
- Context and Importance: This limitation from Claim 2 defines a key functional feature of the push rod. A determination of infringement may depend on whether the accused device's push rod is a single, solid piece of metal (which would likely not be "independently rotatable") or a multi-part assembly with a tip that can rotate freely from the threaded body. Practitioners may focus on this term because it appears to be a primary point of technical differentiation.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself does not recite a specific mechanism (e.g., a ball bearing) for achieving independent rotation, which may support an argument that any structure performing that function meets the limitation. (’156 Patent, col. 7:42-45).
- Evidence for a Narrower Interpretation: The patent’s detailed description and figures disclose a specific embodiment where independent rotation is achieved via a ball bearing (84) placed between the threaded portion (80) and a separate distal tip (26). A party could argue that the claim scope should be construed in light of this specific, and only, disclosed embodiment for achieving the function. (’156 Patent, Fig. 5; col. 5:1-16).
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement, stating that Defendants have knowledge of the ’156 patent and "knowingly induce their customers to use the Accused Instrumentalities in a manner that infringes." (Compl. ¶29). This is supported by allegations that Defendants provide instructions on how to use the tool (Compl. ¶29) and that the tool has "no other reasonable use" and is not a staple good. (Compl. ¶¶32, 34).
- Willful Infringement: The complaint alleges willful infringement based on Defendants' alleged continuation of infringing activities after receiving a cease and desist letter on or about June 16, 2020, which allegedly provided actual notice of the ’156 patent and the infringement. (Compl. ¶¶15, 35).
VII. Analyst’s Conclusion: Key Questions for the Case
- A threshold procedural question is the viability of the complaint itself: given that a 2024 ex parte reexamination cancelled the asserted claims, the action cannot proceed as filed. The court will need to address whether Plaintiff will be granted leave to amend its complaint to assert the new, different claims that issued from that proceeding.
- Assuming the case moves forward on amended claims similar to the originals, a core issue will be one of structural interpretation: does the accused puller’s push rod embody the "independently rotatable" feature as claimed? The resolution will likely depend on claim construction and a factual analysis of the accused product's physical design.
- A key evidentiary question for any method claim will be one of intent for inducement: what proof can be offered that Defendant's instructions or marketing materials specifically encouraged customers to perform every step of the patented method, thereby demonstrating the specific intent required to hold Defendant liable for its customers' actions?