1:24-cv-00944
TAPP Mfg Inc v. Speed Utv LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: TAPP MFG, Inc. (Canada)
- Defendant: Speed UTV, LLC (Delaware / North Carolina)
- Plaintiff’s Counsel: Shumaker, Loop & Kendrick, LLP
- Case Identification: 1:24-cv-00944, M.D.N.C., 11/13/2024
- Venue Allegations: Venue is alleged to be proper in the Middle District of North Carolina because Defendant resides there, a substantial part of the events giving rise to the claims occurred there, and it is the location of Defendant's alleged ongoing infringement.
- Core Dispute: Plaintiff alleges that Defendant’s high-performance off-road vehicles and standalone clutches infringe a patent related to continuously variable transmission (CVT) primary clutch technology, following the termination of a prior license agreement between the parties.
- Technical Context: The technology concerns adjustable primary clutches for CVTs, which are critical components for controlling power transmission and performance in high-demand power sports vehicles.
- Key Procedural History: The complaint alleges that the parties entered into a license agreement in November 2020 for Plaintiff's clutch technology. Plaintiff alleges it terminated this agreement in April 2024 due to Defendant's failure to make royalty payments. The infringement allegations are based on Defendant's continued manufacturing and selling of the accused clutches after the patent issued in October 2024. This history is central to the allegations of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2020-11-04 | Parties enter into a License Agreement for Plaintiff's technology |
| 2021-03-08 | '695 Patent Priority Date (U.S. Provisional App. 63/158,307) |
| 2023-09-01 | Defendant allegedly begins manufacturing the accused Speed UTV Vehicles |
| 2024-04-06 | Plaintiff alleges the License Agreement terminated |
| 2024-10-01 | U.S. Patent No. 12,104,695 issues |
| 2024-11-13 | Complaint filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 12,104,695 - CVT PRIMARY CLUTCH FOR OFF-ROAD VEHICLES, issued October 1, 2024
The Invention Explained
- Problem Addressed: In the field of high-performance off-road vehicles, there is a desire to improve the mechanical strength and performance of drivetrain systems, particularly CVT clutches, while simultaneously reducing their mechanical complexity (Compl. ¶25; ’695 Patent, col. 2:58-63).
- The Patented Solution: The patent describes a CVT primary clutch with enhanced adjustability. The core mechanism involves a stationary sheave and a moveable sheave mounted on a central post. Centrifugal force acts on multiple "shift arms," which have rollers that ride along corresponding "ramps." This action pushes the moveable sheave toward the stationary one, engaging the drive belt (’695 Patent, Abstract; col. 6:10-29). Plaintiff's presentation slide, referenced in the complaint, highlights that this design "clamps the belt more effectively," "runs cooler," and is "more adjustable than any other clutch" (Compl. ¶26). This slide includes a photograph of the clutch assembly, illustrating its main components (Compl. ¶26, "TAPP Clutch Summary").
- Technical Importance: This design provides a method for finely tuning clutch performance—specifically the engine RPM at which the clutch engages—to suit different operating conditions, which is critical in the demanding off-road vehicle market (Compl. ¶20; ’695 Patent, col. 2:13-18).
Key Claims at a Glance
- The complaint explicitly references exemplary Claim 1 (Compl. ¶27).
- Independent Claim 1 requires:
- A CVT primary clutch for a vehicle engine.
- A center post for mounting to an engine crankshaft.
- A stationary sheave attached to the center post.
- A moveable sheave that moves axially along the center post.
- A face plate fastened to the moveable sheave.
- A spider portion mounted on the center post.
- At least two shift arms and ramps coupling the moveable sheave and spider portion, with specific structures for how rollers on the shift arms interact with the ramps to push the moveable sheave.
- Shift arms configured to receive additional weights via a thru bolt to adjust engagement RPM.
- Ramps supported by a "quick shift bolt" and having two selectable sides for the rollers to engage.
- The complaint does not explicitly reserve the right to assert dependent claims, but Plaintiff reserves the right to assert claims against other parties upon further investigation (Compl. p. 29).
III. The Accused Instrumentality
Product Identification
The "Accused Primary Clutch" which is a component of Defendant's nine "Speed UTV Vehicle" models (e.g., Baja Bandit, El Diablo, El Jefe) and is also sold as a stand-alone replacement part (Compl. ¶42-43). The complaint includes marketing images of the various vehicle models, differentiating them by price and trim level (Compl. ¶42).
Functionality and Market Context
The complaint alleges the accused products are "Forged Aluminum Primary and Secondary Clutches" featuring "Mechanical Cooling Fans," "Shaft bearing support," and "Tool Free adjustments" (Compl. ¶44). A key allegation, supported by a slide from Defendant's own presentation, is that "The production clutches have maintained all adjustments and tuning features of the test clutches," which Plaintiff alleges were based on its prototype (Compl. ¶44, "PRODUCTION CLUTCHES" slide). The complaint further alleges Defendant's incorporation of the clutches was a "major selling point" for its vehicles, promoted through marketing that highlighted the involvement of Plaintiff's founder (Compl. ¶46-47).
IV. Analysis of Infringement Allegations
The complaint does not contain a claim chart in its body but alleges that the "Accused Primary Clutch practices at least one Claim of the '695 Patent" and refers to a claim chart in an unattached exhibit (Compl. ¶65). The infringement theory is based on the allegation that Defendant is manufacturing and selling the very clutch design it previously licensed from Plaintiff.
’695 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A CVT primary clutch for an engine of a vehicle... | The Accused Primary Clutch is a component of Defendant's off-road vehicles and is sold as a standalone clutch. | ¶43, ¶67 | col. 10:9-12 |
| a center post for mounting to an output end of an engine crankshaft; a stationary sheave to be attached to the center post; a moveable sheave for moving axially along the center post... | The Accused Primary Clutch is alleged to be the clutch design developed by Plaintiff, which incorporates a center post, stationary sheave, and moveable sheave as fundamental components of a CVT primary clutch. | ¶30, ¶44, ¶62 | col. 5:32-49 |
| a spider portion mounted onto the center post within an interior of the moveable sheave; and at least two shift arms and ramps coupling the moveable sheave with the spider portion... | The complaint alleges the accused clutches contain the innovative features of the licensed design, which includes the spider portion, shift arms, and ramps. The "PRODUCTION CLUTCHES" slide shows an assembly consistent with these internal components (Compl. ¶44). | ¶44, ¶65 | col. 6:10-29 |
| the shift arms each including opposing exterior surfaces each configured to receive additional weights secured to the opposing exterior surfaces of the shift arm by a thru bolt to affect the engine RPM... | The complaint alleges that the accused "production clutches have maintained all adjustments and tuning features of the test clutches," which would include the ability to add weights to the shift arms to tune performance. | ¶44, ¶47 | col. 10:33-44 |
| the ramps each supported in the moveable sheave by a quick shift bolt directly mounted within the moveable sheave, the ramps each includes a roller engaging first side and a roller engaging second side located distal and opposite to the roller engaging first side, the first and second sides may be selected to contact the rollers and affect the engine RPM... | The complaint alleges that the accused clutches provide for "Tool Free adjustments" and maintain the features of the test clutches, which corresponds to the patented quick shift bolt and dual-sided ramp design for adjusting performance (Compl. ¶44). | ¶44 | col. 10:39-54 |
Identified Points of Contention
- Technical Questions: While the complaint alleges the accused clutch is the same as the licensed prototype, a central question for the court will be one of verification: does the accused product as actually manufactured and sold by Defendant contain every element of Claim 1? The complaint alleges Defendant has built and is offering to sell over 700 vehicles, and a photo shows a large inventory of these vehicles (Compl. ¶68-69). Any modifications made by Defendant from the original prototype design could create a dispute over literal infringement.
- Scope Questions: The claims contain highly specific structural limitations, such as "a quick shift bolt directly mounted within the moveable sheave" and the precise interaction of the rollers, ramps, and weights. The infringement analysis will depend on whether the court construes these terms broadly to cover functional equivalents or narrowly to cover only the specific structures disclosed in the patent.
V. Key Claim Terms for Construction
- The Term: "quick shift bolt"
- Context and Importance: This term appears central to the patent's claimed adjustability. The patent describes it as providing an "adjustable means for positioning the ramp" with multiple unique positions (col. 8:45-53). Practitioners may focus on this term because its construction will determine whether only the specific cammed, hexagonal-headed bolt shown in the patent infringes, or if other mechanisms for adjusting the ramp angle could also fall within the claim's scope.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the bolt's function as providing "an adjustable means for positioning the ramp" (col. 7:49-53), which could suggest the term covers other functionally equivalent adjustment mechanisms.
- Evidence for a Narrower Interpretation: The specification and figures provide a very detailed description of a specific embodiment, including a "threaded portion," a "hexagonal head," and an "intervening cam" that is offset from the bolt's longitudinal axis (col. 8:26-44; Fig. 13). This detail could support a narrower construction limited to a bolt with these specific structural features.
VI. Other Allegations
Indirect Infringement
The complaint alleges that Defendant induces infringement by providing a User Manual with its vehicles, which includes instructions on how to use and maintain the Accused Primary Clutch as intended by the patent (Compl. ¶91).
Willful Infringement
The willfulness claim is based on extensive factual allegations, including: (1) the parties' prior licensing and business relationship, giving Defendant intimate knowledge of the technology (Compl. ¶34-41); (2) Defendant's alleged awareness of the patent application that matured into the ’695 Patent (Compl. ¶62); and (3) Defendant's alleged continued manufacture and sale of infringing products after the license was terminated and after the patent issued (Compl. ¶57, ¶67).
VII. Analyst’s Conclusion: Key Questions for the Case
Contract vs. Patent: While this is a patent infringement case, its narrative is rooted in a soured business relationship. A primary issue will be separating the breach of contract claims from the patent infringement claims. The court will have to determine the legal effect of the alleged license termination on the subsequent patent infringement, particularly regarding the question of willfulness and damages.
Infringement Verification: A key evidentiary question will be one of technical identity. Plaintiff must prove that Defendant's mass-produced clutches are, in fact, identical to the patented invention and meet every limitation of the asserted claims. The case may turn on whether Defendant made any design modifications after the relationship deteriorated that could take the accused products outside the literal scope of the claims.
Claim Scope and Specificity: The asserted claim is highly detailed, reciting specific mechanical components like the "quick shift bolt" and the configuration of "additional weights." A central legal question will be one of definitional scope: how narrowly will the court construe these detailed structural limitations? The outcome will determine whether infringement requires near-identical copying of the patent's specific embodiments or if functionally similar components in the accused clutches are sufficient to infringe.