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 Iwagu (Michigan)
  • Plaintiff’s Counsel: Butzel Long; Fox Rothschild LLP
• Case Identification: 1:22-cv-00857, W.D. Mich., 09/21/2022
• Venue Allegations: Venue is alleged to be proper based on Defendant ZZPerformance LLC’s principal place of business in Wyoming, Michigan, and Defendant Uzoma Iwagu’s residence within the judicial district.
• Core Dispute: Plaintiff alleges that Defendant’s "ZZP Supercharger Pulley Puller," an aftermarket automotive tool, infringes a patent related to a mechanical puller for removing pulleys from supercharger shafts.
• Technical Context: The technology concerns specialized mechanical tools for the automotive performance and repair industry, designed to simplify the removal of press-fit components in constrained engine bays.
• Key Procedural History: The complaint alleges Plaintiff sent a cease and desist letter on June 16, 2020, putting Defendants on notice of the patent prior to the lawsuit. Significantly, after the complaint was filed, the asserted patent underwent an ex parte reexamination. The Reexamination Certificate, issued March 26, 2024, cancelled all original claims, including the two asserted in this complaint, and added a new set of claims. This event fundamentally alters the basis of the dispute, as the claims originally asserted no longer exist. A related reissue application was also filed on January 17, 2024, and is noted as pending.

Case Timeline

Date	Event
2014-04-11	'156 Patent Priority Date
2015-01-13	'156 Patent Issue Date
2020-06-16	Alleged date of pre-suit notice letter to Defendants
2022-09-21	Complaint Filing Date
2023-02-27	Reexamination of '156 Patent Requested
2024-01-17	Reissue Application for '156 Patent Filed
2024-03-26	Reexamination Certificate for '156 Patent Issued

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

U.S. Patent No. 8,931,156 - Puller for Pully of Supercharger

Issued: January 13, 2015

The Invention Explained

• Problem Addressed: The patent's background section identifies the difficulty, labor, and expense associated with removing pulleys from shafts in modern automobile engines, which have tight spacing requirements that often necessitate the removal of other components to gain access (’156 Patent, col. 1:17-29; Compl. ¶12).
• The Patented Solution: The invention is a specialized mechanical tool designed to remove a pulley without requiring extensive disassembly of surrounding engine parts. It employs a structure with a distal plate that engages the back of the pulley and a proximal plate through which a threaded push rod advances. As the user turns the push rod, it presses against the end of the supercharger's shaft, creating a pulling force on the plates that are clamped around the pulley, thereby extracting the pulley from the shaft (’156 Patent, Abstract; col. 3:1-14). A C-shaped opening in the distal plate allows the tool to be fitted around the shaft and behind the pulley in a confined space (’156 Patent, col. 3:10-12).
• Technical Importance: The design offers a targeted solution that simplifies a common task for automotive mechanics and enthusiasts, potentially reducing service time and cost by avoiding collateral component removal (’156 Patent, col. 1:26-29).

Key Claims at a Glance

The complaint asserts infringement of claims 2 and 8 of the original patent (Compl. ¶22). However, an ex parte reexamination certificate cancelled all original claims (1-11) and added new claims 12-19 (’156 C1, col. 2:47-49). The analysis below is based on the claims as asserted in the complaint.

• Independent Claim 2 (Apparatus Claim, now cancelled):

  • A distal plate with an opening smaller than the pulley and three attachment points.
  • A proximal plate with three aligned attachment points and a central threaded hole.
  • Three elongate frame members connecting the distal and proximal plates at their attachment points.
  • A push rod threadably engaged with the proximal plate, having a wrench-engaging portion and a distal portion to engage the shaft.
  • Wherein clockwise rotation of the push rod creates an opposing force to pull the pulley off the shaft.
  • Wherein the distal portion of the push rod is independently rotatable with respect to the wrench-engaging portion.

• Independent Claim 8 (Method Claim, now cancelled):

  • A method of removing a pulley from a supercharger shaft comprising the steps of:
  • inserting the pulley between the proximal and distal plates of a puller;
  • inserting the shaft into an opening of the distal plate;
  • rotating a push rod attached to the proximal plate;
  • engaging a distal portion of the push rod with the shaft;
  • pushing the pulley off the shaft with the distal plate.

The prayer for relief seeks an injunction against infringement of "any of the claims of the ’156 patent" (Compl. p. 8, ¶(c)).

III. The Accused Instrumentality

Product Identification

The "ZZP Supercharger Pulley Puller" ("Accused Instrumentalities") sold by Defendants (Compl. ¶16).

Functionality and Market Context

The complaint alleges the Accused Instrumentalities are aftermarket automotive parts that embody the patented invention (Compl. ¶¶16-17). Their alleged function is to remove supercharger pulleys by employing a structure of distal and proximal plates, three frame members, and a threaded push rod (Compl. ¶¶23-28). The complaint asserts these products directly compete with those sold by ZPE's authorized licensee (Compl. ¶18). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint maps elements of the Accused Instrumentality to the limitations of original claim 2.

’156 Patent Infringement Allegations (based on original Claim 2)

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 Instrumentalities comprise a puller with a distal plate with an opening large enough for a supercharger shaft but smaller than the pulley, and having three attachment points.	¶¶23-25	col. 6:38-49
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 Instrumentalities comprise a proximal plate with three attachment points aligned with those on the distal plate.	¶26	col. 6:50-55
three elongate frame members... attached to the three attachment points of the distal plate... [and] the proximal plate;	The Accused Instrumentalities comprise three frame members attached to the distal and proximal plates.	¶27	col. 6:56-61
a push rod threadably engaged to the threaded hole of the proximal plate, the push rod having a wrench engaging portion for rotating the push rod and a distal portion sized and configured to engage a proximal end of the shaft...	The Accused Instrumentalities comprise a push rod threadably engaged to the proximal plate, with a wrench engaging portion and a distal portion configured to engage the shaft.	¶¶28-29	col. 6:62-67
wherein clockwise rotation of the push rod traverses the distal portion... into engagement with the proximal end of the shaft... and creates an opposing force... to pull the pulley off...	Rotation of the push rod traverses its distal portion into engagement with the shaft, creating a force to push the pulley off.	¶30	col. 7:1-6
wherein the distal portion of the push rod is independently rotatable with respect to the wrench engaging portion.	The distal portion of the push rod is independently rotatable with respect to the wrench engaging portion.	¶31	col. 7:42-45

Identified Points of Contention

• Claim Validity: The most significant issue is that the asserted claims (2 and 8) have been cancelled during reexamination (’156 C1, col. 2:47). The case cannot proceed on these claims. The dispute may turn on whether Plaintiff can amend the complaint to assert the newly issued claims (12-19) and whether Defendants can successfully argue that the doctrine of intervening rights limits or bars damages.
• Scope Questions: Should the case proceed on the new claims, a central dispute will likely involve limitations added during reexamination. For example, new independent claim 12 requires a "mount protruding from an outer surface of the proximal plate" for engagement with a wrench. Whether the Accused Instrumentality includes such a "mount" as defined by the patent will be a critical question of fact and claim construction.

V. Key Claim Terms for Construction

Analysis of key terms is impacted by the cancellation of the originally asserted claims. The following terms, one from an original claim and one from a new claim, highlight potential areas of dispute.

Term for Construction: "independently rotatable"

(from cancelled Claim 2)

• Context and Importance: This limitation describes a specific technical feature where the tip of the push rod does not spin against the supercharger shaft during operation, preventing potential damage to the shaft. Whether the accused device contains this feature is a key factual question, and its interpretation could have been central to the original infringement analysis.
• Evidence for a Broader Interpretation: A party might argue the term functionally requires any mechanism that allows the tip to remain stationary relative to the shaft while the rest of the rod rotates, without being limited to a specific structure ('156 Patent, col. 5:1-8).
• Evidence for a Narrower Interpretation: The specification discloses a specific embodiment using a ball bearing (84) between the threaded portion (80) and the distal portion (26) of the push rod (’156 Patent, col. 5:8-22; Fig. 5). A party could argue the term should be limited to this disclosed ball-bearing mechanism or a structural equivalent.

Term for Construction: "mount"

(from new Claim 12)

• Context and Importance: This term was added to new claim 12 during reexamination and appears to be a point of novelty over prior art. Its construction will be critical to any infringement analysis of the new claims. Practitioners may focus on this term because its presence or absence on the accused device could be dispositive of infringement for the reexamined patent.
• Evidence for a Broader Interpretation: Plaintiff may argue that "mount" should be construed broadly to mean any surface or feature on the proximal plate that allows a wrench to grip it and prevent rotation.
• Evidence for a Narrower Interpretation: The specification describes specific "mounts 62" with a "hexagonal configuration" protruding from the proximal plate, designed to receive a wrench or breaker bar (’156 Patent, col. 4:14-27). A defendant may argue that the term is limited to this specific hexagonal structure shown in the patent's figures.

VI. Other Allegations

Indirect Infringement

The complaint alleges Defendants induce infringement by instructing customers on how to use the Accused Instrumentalities in a manner that performs the steps of the patented method (Compl. ¶33). It further alleges that the Accused Instrumentalities are not staple goods and have no substantial non-infringing use, which are allegations that support a claim for contributory infringement (Compl. ¶¶36, 38).

Willful Infringement

Willfulness is alleged based on Defendants’ purported continued infringement after receiving a cease and desist letter on or about June 16, 2020, which allegedly provided actual notice of the ’156 Patent (Compl. ¶19, 39).

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

The future of this litigation appears to depend on the resolution of several fundamental questions arising from the post-filing reexamination of the ’156 Patent.

• A central procedural question will be one of viability and amendment: given that the asserted claims have been cancelled, can the Plaintiff successfully amend its complaint to allege infringement of the newly issued claims, and if so, what is the impact of the doctrine of intervening rights on the scope of recoverable damages?
• Should the case proceed, a core issue will be one of claim scope: can the term "mount," which was added to the claims during reexamination to secure their allowance, be construed to read on the features of the accused "ZZP Supercharger Pulley Puller"? The answer will likely determine infringement of the reexamined patent.
• A key evidentiary question will be one of technical fact: what is the precise structure and method of operation of the accused tool? The complaint’s allegations must be substantiated with evidence, particularly regarding technically specific features like the "independently rotatable" push rod tip, which may or may not be present in the new claims but remains a key feature of the disclosed invention.