DCT
5:18-cv-00123
Wagner v. Ashline
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Julie Wagner (North Carolina)
- Defendant: Trevor Ashline (North Carolina); Simpson Performance Products, Inc. (Texas Corporation)
- Plaintiff’s Counsel: Grogan, Tuccillo & Vanderleeden, LLP
- Case Identification: 5:18-cv-00123, W.D.N.C., 08/06/2018
- Venue Allegations: Venue is alleged to be proper because the individual defendant resides in the district, the corporate defendant operates a store and sales team in the district, and a substantial part of the events giving rise to the claims took place within the district.
- Core Dispute: Plaintiff alleges she is a co-inventor of a patent for a motorsports safety device and seeks to correct the patent’s inventorship, claiming the named inventor derived the core concept of the invention from her communications.
- Technical Context: The technology concerns head and neck restraint systems used in high-performance motorsports to prevent severe injury during collisions.
- Key Procedural History: The complaint alleges that Plaintiff conveyed the key inventive concept to the named inventor on multiple occasions between 2003 and 2006, prior to the filing of the provisional patent application that led to the patent-in-suit. No prior litigation or post-grant proceedings are mentioned.
Case Timeline
| Date | Event |
|---|---|
| 2001 | Plaintiff begins work on a child safety vest |
| 2003-12-03 | Earliest Priority Date for ’074 Patent Family |
| 2003-08-08 | Plaintiff first meets Defendant Ashline |
| 2005 | Plaintiff allegedly conveys idea to modify epaulettes to Ashline |
| 2006-01-05 | Plaintiff's son's car accident confirms her hypothesis |
| 2006-01-11 | Plaintiff allegedly communicates inventive concept to Ashline |
| 2006-01-14 | Plaintiff allegedly communicates inventive concept to Ashline |
| 2006-05-05 | U.S. Provisional Patent Application No. 60/797,921 filed |
| 2007-04-13 | U.S. Patent Application No. 11/787,532 filed |
| 2012-09-25 | U.S. Patent No. 8,272,074 issues |
| 2018-08-06 | Complaint for Correction of Inventorship filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,272,074 - "Head Restraint Device Having a Support Member with Back and Shoulder Portions"
The Invention Explained
- Problem Addressed: In high-performance vehicle collisions, standard seat belts restrain a driver's torso but not their head and neck, which can move forward and downward uncontrollably, leading to severe injuries like basilar skull fractures (’074 Patent, col. 1:33-56). Existing devices like the HANS Device® were described as rigid, bulky, and potentially impeding a driver's exit from a vehicle (’074 Patent, col. 2:11-27).
- The Patented Solution: The invention is a restraint device comprising a support member worn on the driver's back and shoulders, a tether connecting the member to a helmet, and straps anchoring the member to the vehicle's seat belt assembly (’074 Patent, Abstract). A key feature is that the device’s "shoulder portions" are configured to engage the vehicle's own shoulder belts, which improves the device's ability to resist the dangerous forward and downward rotation of the driver's head during a crash (’074 Patent, col. 3:35-40).
- Technical Importance: The device claims to offer an improved and alternative head and neck restraint that is lightweight, less intrusive than prior art yokes, and integrates with existing seat belt assemblies to control head movement during frontal, angular, and side impacts (’074 Patent, col. 3:8-17; col. 5:35-44).
Key Claims at a Glance
- The complaint asserts that Plaintiff contributed to the conception of at least claims 1, 13, 17, and 18 (Compl. ¶46).
- Independent Claim 1, a central claim in the dispute, recites the following essential elements:
- A restraint device for controlling a driver's head during a vehicle collision, comprising:
- a member having shoulder portions at least partially positionable on top of at least a portion the shoulders of the driver;
- a tether attached to said member and adapted for being attached to a helmet;
- a strap attached to said member and adapted for being attached to a vehicle's seat belt assembly;
- wherein the seat belt assembly serves as an anchor to control movement of the driver's head.
- The complaint does not explicitly reserve the right to assert other claims, but focuses its inventorship argument on the concept embodied in claims 1, 13, 17, and 18.
III. The Alleged Inventive Contribution
This action is for correction of inventorship, not infringement against a product. The subject of the dispute is the conception of the invention itself.
Contribution Identification
The core of the dispute is Plaintiff's alleged conception of using "shoulder portions" to maintain the proper position of a seatbelt over a user's shoulder to mitigate injury during a crash (Compl. ¶¶4, 47).
Functionality and Context
- The complaint alleges that Plaintiff, a registered nurse, developed a "Guardian Angel Vest" for children that included a unique belt-positioning "epaulette" feature designed to maintain the over-the-shoulder belt's position over the mid-clavicle (Compl. ¶¶17, 20).
- Plaintiff alleges she conveyed this concept to Defendant Ashline on multiple occasions, specifically for application in motorsports, explaining its function of guiding the seatbelt and reducing injury (Compl. ¶¶25, 26, 29-30).
- The complaint alleges that Defendant Ashline had no knowledge of this concept until it was conveyed to him by Plaintiff and that this concept was first introduced into the "Ashline Patent Family" in the application filed after these communications (Compl. ¶¶37-38).
IV. Analysis of Inventorship Allegations
No probative visual evidence provided in complaint.
The central question in an inventorship dispute is whether the purported inventor contributed to the conception of the invention as defined by the patent's claims. The table below maps the Plaintiff's alleged contributions to the language of a representative independent claim.
’074 Patent Inventorship Allegations
| Claim Element (from Independent Claim 1) | Plaintiff's Alleged Conceptual Contribution | Complaint Citation | Patent Citation |
|---|---|---|---|
| a member having shoulder portions at least partially positionable on top of at least a portion the shoulders of the driver; | Plaintiff alleges she conceived of and communicated the idea of using shoulder portions (her "epaulette" feature) to maintain the position of a seatbelt over/on top of the shoulder to mitigate injuries from displacement during a crash. | ¶¶4, 20, 26, 47 | col. 14:1-3 |
| wherein the seat belt assembly serves as an anchor to control movement of the driver's head during a vehicle collision when said strap is attached to the seat belt assembly. | Plaintiff alleges she conveyed the function of her feature was to reduce injury by "maintaining/guiding the over-the-shoulder portion of the seatbelt over/on top of the occupant's shoulder during a crash." | ¶25 | col. 14:7-12 |
- Identified Points of Contention:
- Conception vs. Realization: A central question will be whether Plaintiff's alleged communications constituted a contribution to the conception of the claimed invention (a definite and permanent idea of the complete and operative invention) or merely explained a general problem and a desired result, leaving the means of achieving it to the named inventor.
- Evidentiary Questions: The case will depend on whether Plaintiff can produce corroborating evidence (e.g., the emails referenced in Compl. ¶¶29-30) to support her claim of conception and communication to Defendant Ashline. The complaint alleges that prior documents in the "Ashline Patent Family" did not include the "shoulder portions" element, which may be presented as circumstantial evidence of derivation (Compl. ¶36).
V. Key Claim Terms for Construction
The definition of certain claim terms will be critical to determining whether Plaintiff's alleged contribution is embodied in the final claims.
- The Term: "shoulder portions"
- Context and Importance: This term is the focal point of the inventorship dispute. The court's interpretation of what constitutes "shoulder portions" under the patent will be compared against Plaintiff's evidence of what she allegedly conceived and communicated (her "epaulette" feature). Practitioners may focus on this term because if its scope is broad enough to read on Plaintiff's alleged contribution, her claim for co-inventorship may be strengthened; if it is construed more narrowly to include features she did not conceive, her claim may be weakened.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent claims require only that the shoulder portions be "at least partially positionable on top of at least a portion the shoulders of the driver" (’074 Patent, col. 14:1-3). This broad language could be argued to encompass a variety of structures, including the "epaulette" feature Plaintiff describes.
- Evidence for a Narrower Interpretation: The specification describes the shoulder portions in a specific embodiment as extending "laterally from, and also forward of, the back portion" and having a "channel 32 defined between an outer lip 34 and an inner lip 36" to "accommodate shoulder belts 110" (’074 Patent, col. 8:1-7). A defendant could argue this more detailed structure is the actual invention, and that Plaintiff must prove she conceived of these specific structural details, not just the general idea of an over-the-shoulder guide.
VI. Other Allegations
- Unjust Enrichment (Count II): Plaintiff alleges that Defendants have been unjustly enriched by economically benefiting from the ’074 Patent, including through use and licensing, to the exclusion of Plaintiff, who claims an ownership interest as a co-inventor (Compl. ¶¶51-53).
- Imposition of Constructive Trust (Count III): Plaintiff requests the court impose a constructive trust on any profits Defendants have derived or will derive from the ’074 Patent, arguing these profits are the result of wrongful activities (i.e., the failure to name her as an inventor) (Compl. ¶¶57-58).
VII. Analyst’s Conclusion: Key Questions for the Case
This case appears to turn on two fundamental questions inherent in inventorship disputes:
The Nature of the Contribution: A core issue will be one of conception versus reduction to practice. Did Plaintiff's alleged communications to the named inventor convey a "definite and permanent idea of the complete and operative invention" for the "shoulder portions" limitation, or did she merely identify a problem and a desired outcome, leaving the inventive act of creating the solution to the named inventor?
The Standard of Proof: A key evidentiary challenge for the Plaintiff will be corroboration. To succeed, a party claiming co-inventorship must provide clear and convincing evidence to corroborate their claim. The disposition of the case will likely hinge on whether the evidence Plaintiff can produce, such as the alleged emails, is sufficient to meet this high legal standard.