DCT
0:18-cv-03401
Cardone Industries Inc v. Kpa Turbos LLC
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Cardone Industries, Inc. (Pennsylvania)
- Defendant: kPA Turbos L.L.C. (Minnesota) and Silber Service L.L.C. (Minnesota)
- Plaintiff’s Counsel: Honigman Miller Schwartz and Cohn LLP; Brownson Norby, PLLC
- Case Identification: 0:18-cv-03401, D. Minn., 12/14/2018
- Venue Allegations: Venue is alleged to be proper in the District of Minnesota as both defendants are Minnesota companies with their principal places of business within the district.
- Core Dispute: Plaintiff alleges that Defendants’ aftermarket turbocharger products and kits infringe a patent related to an improved turbocharger bearing assembly designed to reduce failure.
- Technical Context: The technology concerns high-performance turbochargers, a forced induction device used to increase internal combustion engine power, particularly in the aftermarket automotive and powersports sectors.
- Key Procedural History: Plaintiff sent cease and desist letters to both defendants on October 30, 2018. The complaint alleges that defendants had knowledge of the patent-in-suit and the alleged infringement at least as of this date, forming the basis for a willfulness claim. A response from defendants' counsel was received on November 12, 2018.
Case Timeline
| Date | Event |
|---|---|
| 2011-03-21 | '652' Patent Priority Date (Provisional Application) |
| 2013-12-10 | '652 Patent Issue Date |
| 2018-10-30 | Plaintiff sends cease and desist letters to Defendants |
| 2018-11-12 | Defendants' counsel responds to cease and desist letters |
| 2018-12-14 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,602,652 - "Turbocharger Bearing Assembly"
The Invention Explained
- Problem Addressed: The patent and complaint identify the historical problem of bearing failure in turbochargers, which is attributed to the "incredibly high rotational speeds and forces exerted upon these members" (Compl. ¶15; ’652 Patent, col. 1:8-12).
- The Patented Solution: The invention is an "axially balanced load turbocharger bearing assembly" designed to improve durability ('652 Patent, Abstract). It uses two separate annular ball bearing assemblies mounted on a common shaft. These are separated by an inner spacer that rotates with the shaft and an outer spacer that remains fixed relative to the turbocharger housing. This configuration is designed so that when an axial force is pushed in one direction (e.g., "to the left"), one bearing assembly absorbs the entire load while the other is able to "spin freely," reducing friction and wear (’652 Patent, col. 2:5-15). The assembly also includes a specific system of oil ports and channels to deliver lubricant directly to the moving parts (’652 Patent, col. 2:22-41).
- Technical Importance: This design purports to solve the problem of premature bearing failure by isolating axial loads to one bearing at a time, a significant issue in high-performance turbochargers (Compl. ¶17).
Key Claims at a Glance
- The complaint asserts infringement of at least independent claim 1 (Compl. ¶28, ¶50).
- The essential elements of independent claim 1 include:
- A turbocharger housing with an inner cavity and a shaft.
- A first and a second annular bearing assembly.
- An outer spacer with an outer diameter "substantially the same" as the bearings, fixed relative to the housing.
- An inner spacer with an inner diameter "substantially the same" as the bearings, which rotates with the shaft.
- An oil port and channels in the housing providing fluid communication to the outer spacer.
- At least one oil channel through the outer spacer.
- The complaint does not explicitly reserve the right to assert dependent claims, but the infringement counts refer to "one or more claims" (Compl. ¶28, ¶50).
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are aftermarket turbochargers sold by Defendant kPA Turbos, including product numbers kPa2252BB, kPa2860, kPa2863B, and kPa2868BB (the "Accused kPa Products") (Compl. ¶28). These same products are also sold by Defendant Silber Service and are utilized in products such as "Silber's Ski-Doo G4 850 Turbo Kit" (the "Accused Silber Products") (Compl. ¶50).
Functionality and Market Context
The accused products are components used to increase the power output of engines, sold into the aftermarket and powersports markets (Compl. ¶11-12). The complaint alleges these are direct replacements or upgrades for standard turbochargers. The infringement allegations are supported by numerous photographs of disassembled accused products, purporting to show that they contain the same core components as the patented assembly, including two bearing assemblies and inner/outer spacers. A photograph of the fully assembled Silber kit shows the turbocharger integrated with pipes and other components for installation on a snowmobile (Compl. p. 21).
IV. Analysis of Infringement Allegations
'652 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a. a first annular bearing assembly having an outer surface that engages a surface of the inner cavity; | The accused products contain a "first annular bearing assembly," as depicted in a photograph of the component. (Image provided showing the first annular bearing assembly inside the turbocharger) | ¶30, ¶52 | col. 1:53-56 |
| b. a second annular bearing assembly having an outer surface that engages a surface of the inner cavity; | The accused products contain a second annular bearing assembly, which is alleged to be the same size as the first. (Image provided showing the second annular bearing assembly inside the turbocharger) | ¶31, ¶53 | col. 2:7-10 |
| c. an outer spacer having an outer diameter substantially the same as an outer diameter of both the first annular bearing assembly and the second annual bearing assembly... | The accused products include an outer spacer. A photograph is provided showing the outer spacer alongside the two bearing assemblies to illustrate the allegedly similar diameters. | ¶32, ¶54 | col. 1:63-65 |
| d. an inner spacer having an inner diameter substantially the same as an inner diameter of both the first annular bearing assembly and the second annual bearing assembly... | The accused products include an inner spacer. The complaint provides an image showing the inner spacer aligned with a bearing assembly to demonstrate the allegedly similar inner diameters. | ¶33, ¶55 | col. 2:41-43 |
| e. wherein the inner diameter of the inner spacer, and the inner diameter of both the first annular bearing assembly and the second annual bearing assembly are substantially the same as an outer diameter of the shaft; | The inner diameters of the accused inner spacer and bearing assemblies are alleged to fit "perfectly" on the shaft. This is supported by an image of the inner spacer fitted onto the shaft. | ¶34, ¶56 | col. 2:47-49 |
| f. wherein the outer spacer is fixed in place relative to the turbocharger housing; | The complaint alleges the outer spacer can be inserted and fixed inside the turbocharger housing, providing a photograph of the component seated within the housing. | ¶35, ¶57 | col. 2:22-24 |
| g. wherein the inner spacer rotates with the shaft; | It is alleged that the inner spacer "fits perfectly on the shaft and rotates with it," supported by a photograph of the shaft and inner spacer assembly. | ¶36, ¶58 | col. 2:50-51 |
| h. the turbocharger housing comprising an oil port in fluid communication with an oil source external of the turbocharger housing; | The accused housing contains an "oil port," shown in a close-up photograph. | ¶37, ¶59 | col. 1:42-43 |
| i. wherein the turbocharger housing comprises at least one turbocharger housing oil channel providing fluid communication between the oil port and the outer spacer; | The accused housing contains oil channels, shown in a photograph, which are alleged to provide fluid communication to the outer spacer. | ¶38, ¶60 | col. 1:44-45 |
| j. wherein the outer spacer comprises at least one outer spacer oil channel therethrough, aligned with the turbocharger housing oil channel. | The accused outer spacer is shown to have at least one oil channel, depicted in a close-up photograph. | ¶39, ¶61 | col. 2:37-39 |
- Identified Points of Contention:
- Scope Questions: The complaint's allegations rely heavily on the term "substantially the same" to describe the relative diameters of the spacers, bearings, and shaft. A central question for the court will be the proper construction of this term. The dispute may turn on whether visual similarity and a "perfect fit" as alleged (Compl. ¶36) meet the standard, or if a more precise, numerical tolerance is required.
- Technical Questions: The infringement case, as pleaded, rests on a visual, structural comparison of static, disassembled parts. A key question is what evidence exists to prove the claimed functional relationships. For example, what evidence demonstrates that the outer spacer is "fixed in place" during high-speed operation, or that the "inner spacer rotates with the shaft" as required, rather than slipping? The complaint alleges these functions but provides evidence based on static fit.
V. Key Claim Terms for Construction
- The Term: "substantially the same"
- Context and Importance: This term appears in three separate limitations of claim 1 (1c, 1d, 1e), governing the critical dimensional relationships between the inner spacer, outer spacer, bearings, and shaft. The viability of the literal infringement claim depends heavily on the scope of this term.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language does not provide a numerical range, suggesting the patentee did not intend to limit the claim to a specific tolerance. Parties may argue it should be given its plain and ordinary meaning of being close enough to achieve the intended fit and function.
- Evidence for a Narrower Interpretation: The specification discloses very precise dimensional gaps for other components, such as a gap of "0.002"±0.002" inches" between the bearing assembly and the housing cavity (´652 Patent, col. 1:57-59) and a gap of "about 0.00025"" between the outer spacer and the bearing race ring (’652 Patent, col.1:66-col.2:2). A party may argue these specific disclosures imply that "substantially the same" should be construed narrowly to mean a very tight, engineered tolerance.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement against both defendants. The basis for inducement is the allegation that defendants provide materials such as "owner's manuals, installation manuals, marketing brochures, and/or service and repair manuals" that "encourage and direct" dealers and customers to install and use the accused products in an infringing manner (Compl. ¶40, ¶62).
- Willful Infringement: Willfulness is alleged based on defendants' continued infringement after receiving actual notice of the '652 Patent and the infringement allegations via cease and desist letters sent on October 30, 2018 (Compl. ¶42, ¶64).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim construction: how much dimensional variance is permitted by the term "substantially the same" as it applies to the diameters of the bearing assembly's core components? The resolution of this question may determine the outcome of the literal infringement analysis.
- A key evidentiary question will be one of proving function from structure: can the plaintiff demonstrate that the accused products meet the functional limitations of the claim (e.g., that the inner spacer "rotates with the shaft" and the outer spacer is "fixed in place" during operation) based primarily on photographs of the products' static, disassembled components? The case may turn on whether the alleged "perfect fit" is sufficient to infer the claimed dynamic behavior.