DCT

8:23-cv-00035

Automatic Equipment Mfg Co v. Yingzi Shi

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 8:23-cv-00035, D. Neb., 01/26/2023
  • Venue Allegations: Venue is alleged to be proper based on the Defendant conducting business in the district by offering the accused product for sale through nationwide online retailers, such as Amazon, which deliver into the State of Nebraska.
  • Core Dispute: Plaintiff alleges that Defendant’s tow bar product infringes two patents related to automatic leg-locking mechanisms and pin-less stowing features.
  • Technical Context: The technology relates to tow bars, which are mechanical apparatuses used to connect a towing vehicle, such as a motorhome, to a towed vehicle, such as a car, for transport on public roadways.
  • Key Procedural History: The complaint alleges Defendant had constructive notice of the patents since at least July 1, 2017, due to Plaintiff's patent-marking practices. Plaintiff also alleges sending pre-suit notification letters to the Defendant on January 24, 2022, and March 18, 2022, which it claims were not responded to. These allegations form the basis for a claim of willful infringement.

Case Timeline

Date Event
2011-08-10 '952 Patent Priority Date
2012-01-30 '181 Patent Priority Date
2013-08-13 '952 Patent Issue Date
2014-04-08 '181 Patent Issue Date
2014-10-31 Plaintiff's alleged first use of AVAIL trademark
2017-07-01 Alleged date of Defendant's constructive notice of patents
2022-01-24 First pre-suit notification letter sent to Defendant
2022-03-18 Second pre-suit notification letter sent to Defendant
2023-01-26 Complaint Filing Date

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

U.S. Patent No. 8,505,952 - "Light-Weight Tow Bar For Vehicles And Leg Lock Therefor," issued August 13, 2013

The Invention Explained

  • Problem Addressed: The patent addresses the difficulty and potential danger of connecting a tow bar between two vehicles, which often requires precise alignment and can be challenging for a single person. It also notes that prior art tow bars struggled to safely accommodate the three axes of relative vehicle motion (pitch, yaw, and roll). A further problem identified is that using new lightweight, high-strength composite materials is difficult because penetrating them for assembly severely degrades their structural integrity. (’952 Patent, col. 2:11-49).
  • The Patented Solution: The invention proposes a tow bar with telescoping legs made of a non-penetrated composite material, where components are secured with adhesives like epoxy. The core innovation is a locking mechanism that automatically secures the telescoping legs at the proper extension once the towing vehicle begins to pull forward. This is achieved by a spring-biased "cam element" that pivots into the path of a "stop element" on the inner leg, locking it in place without manual intervention. (’952 Patent, Abstract; col. 7:19-47).
  • Technical Importance: This design sought to create a lighter, stronger tow bar that was significantly easier and safer for a single operator to use by automating the leg-locking process. (’952 Patent, col. 2:31-38).

Key Claims at a Glance

  • The complaint asserts independent claim 1 and dependent claims 5, 7, 12, and 13 (Compl. ¶56).
  • Independent Claim 1 requires, among other elements:
    • A tow bar leg with an outer member and an inner member, both constructed of composite material.
    • A locking member that includes a body element, a stop element, and a cam element.
    • A specific locking function wherein as the inner member moves rearwardly, the stop element clears the cam element, which is then automatically biased by a resilient element to pivot into the stop element's path, capturing it and thereby locking the leg.

U.S. Patent No. 8,690,181 - "Tow Bar Having Compact Swivel Unit With Pin-Less Stowing Lobes," issued April 8, 2014

The Invention Explained

  • Problem Addressed: The patent identifies the inconvenience of storing a tow bar on the back of a towing vehicle. Prior art solutions for horizontal or vertical stowing often required separate pins, which could be easily lost, or relied on mechanisms that were complicated, unreliable, or unsafe. (’181 Patent, col. 2:26-47).
  • The Patented Solution: The invention describes a swivel unit for a tow bar that includes an "upwardly-extending lobe." When the tow bar legs are folded for storage, this integrated lobe is structured to fit into a corresponding gap between the leg and the swivel unit. This engagement stabilizes the legs in a horizontal, stowed position without the need for any separate or removable pins. (’181 Patent, Abstract; col. 6:1-24).
  • Technical Importance: This design provided a simple and integrated mechanical solution for securely stowing a tow bar, aiming to improve user convenience and reliability by eliminating loose parts. (’181 Patent, col. 2:41-47).

Key Claims at a Glance

  • The complaint asserts claims 1-16 (Compl. ¶64).
  • Independent Claim 1 requires, among other elements:
    • A pair of opposing tow bar legs.
    • A swivel unit that connects the legs to a towing connector.
    • The swivel unit's first portion must include "at least one upwardly-extending lobe structured to be receivable by one of the gaps of the tow bar legs."
    • This lobe enables a user to "pin-lessly stow the tow bar legs in a generally horizontally-oriented stowed configuration."

III. The Accused Instrumentality

Product Identification

A tow bar marketed under the names "BX7420 AVAIL TOW BAR" and "BX7420 TOW BAR" (the "Accused Device") (Compl. ¶32).

Functionality and Market Context

The complaint alleges the Accused Device is a tow bar that functions as a "direct replacement" for Plaintiff's own patented "BX7420 AVAIL tow bar" (Compl. ¶15, ¶33). It is alleged to utilize the "same means to accommodate the yaw, pitch and roll phenomena" and the "same means to stow the tow bar" as claimed in the Asserted Patents (Compl. ¶9). The product is sold nationwide in the United States through online retailers, including Amazon (Compl. ¶4, ¶42).

IV. Analysis of Infringement Allegations

The complaint alleges that the Accused Device infringes both the ’952 and ’181 Patents, stating that it contains, embodies, and employs the inventions described and claimed therein (Compl. ¶55, ¶63). To support these allegations, the complaint references claim charts attached as Exhibits H and I; however, these exhibits were not filed with the complaint and are not available for analysis (Compl. ¶56, ¶64).

The narrative infringement theory for the ’952 Patent is that the Accused Device incorporates the claimed features for accommodating vehicle motion and locking the tow bar legs (Compl. ¶9). For the ’181 Patent, the theory is that the Accused Device uses the claimed features for stowing the tow bar (Compl. ¶9).

The complaint provides visual evidence in Exhibit E, including screenshots of the Accused Device being sold on Amazon, which show the tow bar assembly and its components (Compl. ¶33, Ex. E). Another screenshot from Exhibit E shows a customer question on an Amazon product page asking if the Defendant's product was "a blue ox tow bar," which Plaintiff offers as evidence of similarity and confusion (Compl. ¶47, Ex. E).

Identified Points of Contention

  • Evidentiary Questions: The complaint's infringement allegations are largely conclusory. A central issue will be whether Plaintiff can produce sufficient evidence to demonstrate that the Accused Device's components meet each specific limitation of the asserted claims. The absence of the referenced claim charts in the initial pleading raises the question of how detailed the Plaintiff's pre-suit investigation was.
  • Technical Questions: The case will involve a direct comparison of the Accused Device's mechanics to the patent claims. Key technical questions include: Does the Accused Device's locking mechanism operate via a pivoting "cam element" as required by claim 1 of the ’952 Patent? Does its stowing feature rely on an "upwardly-extending lobe" that fits into a "gap" to achieve a "pin-less" stow, as required by claim 1 of the ’181 Patent?

V. Key Claim Terms for Construction

For the ’952 Patent

  • The Term: "cam element"
  • Context and Importance: This term is central to the automatic locking mechanism of independent claim 1. The infringement analysis for the ’952 Patent will hinge on whether the corresponding locking component in the Accused Device falls within the scope of this term. Practitioners may focus on this term because its construction will define the structural and functional requirements for the patented locking feature.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim describes the element functionally as being "mounted to the body element to pivot" and having a "contoured surface" (’952 Patent, col. 8:36-42). This language does not impose strict geometric constraints, which may support a broader construction covering various pivoting locking structures.
    • Evidence for a Narrower Interpretation: The specification discloses a specific embodiment (element 142 in Figs. 7-9) with a distinct shape and interaction with the stop element. A party might argue that the term should be limited to structures that are the same as or equivalent to this disclosed embodiment, particularly its method of capturing the stop element (’952 Patent, col. 7:23-37).

For the ’181 Patent

  • The Term: "upwardly-extending lobe"
  • Context and Importance: This is the key structural element of the "pin-less" stowing feature in independent claim 1. Whether the Accused Device infringes the ’181 Patent will likely depend on whether it has a structure that meets the definition of this term.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: Claim 1 describes the lobe functionally as being "structured to be receivable by one of the gaps of the tow bar legs" to enable pin-less stowing (’181 Patent, col. 8:1-5). This may support construing the term to encompass any protrusion, regardless of its specific shape, that performs this stabilizing function.
    • Evidence for a Narrower Interpretation: Figure 4 shows a specific embodiment of the lobe (element 164) as a distinct, shaped feature on the yoke arm (56). The abstract also describes the lobe as being part of the "first portion" of the swivel unit. This may support a narrower construction limiting the term to a protrusion located on the yoke and having a structure similar to that depicted (’181 Patent, Fig. 4; Abstract).

VI. Other Allegations

Indirect Infringement

The complaint alleges induced infringement, stating that Defendant’s marketing materials, product labels, and "Operation Manual & Installation Instructions" (attached as Exhibit D) instruct customers on how to use the Accused Device in an infringing manner (Compl. ¶40). The complaint alleges Defendant intended for these customers to infringe (Compl. ¶41).

Willful Infringement

Willfulness is alleged based on both pre-suit and continued post-suit conduct. The complaint alleges Defendant had constructive notice of the patents since July 2017 via Plaintiff's product marking and actual notice via letters sent in January and March 2022, to which Defendant allegedly failed to respond (Compl. ¶36, ¶37). The continued sale of the Accused Device after receiving notice is presented as evidence of willful and deliberate infringement (Compl. ¶60, ¶68).

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

  • A central issue will be one of claim construction: can the terms "cam element" from the ’952 Patent and "upwardly-extending lobe" from the ’181 Patent be construed broadly enough to read on the specific mechanical structures of the Accused Device, or will they be narrowed to the patents' preferred embodiments, potentially placing the accused product outside their scope?
  • A key evidentiary question will be one of technical proof: in the absence of detailed claim charts in the pleading, what evidence will Plaintiff present to establish that the Accused Device performs the precise, multi-step functions required by the claims, such as the automatic locking sequence of the ’952 Patent?
  • Finally, the case raises a significant question regarding willfulness: do the allegations that Defendant marketed a "direct replacement" using Plaintiff's own model number and trademark, and subsequently ignored multiple pre-suit notice letters, rise to the level of egregious conduct that would justify an award of enhanced damages?