1:24-cv-04241
Tiger Tool Intl Inc v. Le
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Tiger Tool International Incorporated (Canada)
- Defendant: Yin Le (United States)
- Plaintiff’s Counsel: Greenberg Traurig LLP
- Case Identification: 1:24-cv-04241, E.D.N.Y., 06/14/2024
- Venue Allegations: Venue is alleged to be proper based on the Defendant’s residence within the district and business activities, including offering for sale and selling the accused products to consumers in New York.
- Core Dispute: Plaintiff alleges that Defendant’s king pin removal tool, sold online, infringes a patent related to a specialized mechanical tool for removing king pins from the steering axle assemblies of heavy-duty vehicles.
- Technical Context: The technology operates in the field of automotive and heavy equipment repair tools, addressing the mechanically challenging task of safely and effectively removing large, press-fit king pins.
- Key Procedural History: The complaint alleges that Plaintiff has never licensed the asserted patent. It further alleges that the Defendant was aware of the patent and willfully infringed by selling a "direct copy" of Plaintiff's commercial product, using the same proprietary SKU number (90150) in marketing materials, and referencing Plaintiff's product as the "OEM" version to be replaced.
Case Timeline
| Date | Event |
|---|---|
| 2013-05-23 | ’488 Patent Priority Date |
| 2016-12-06 | ’488 Patent Issue Date |
| 2024-02-05 | Plaintiff purchased Accused Product from Defendant |
| 2024-06-14 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,511,488, "King Pin Removal Tool" (Issued Dec. 6, 2016)
The Invention Explained
- Problem Addressed: The patent addresses the need for a specialized tool to remove a "king pin" from a "king pin assembly" on heavy vehicles, a component that connects the steering knuckle to the axle beam and is often difficult to dislodge. (’488 Patent, col. 1:12-14).
- The Patented Solution: The invention is a mechanical press that clamps onto the king pin assembly. It comprises a frame made of a drive plate, an anchor plate, and spacing rods. A threaded "drive member" passes through the drive plate and, when rotated, applies axial force to push the king pin out. A critical component is a "stabilizing system" with plates and bolts that engage the vehicle's axle member, which is designed to prevent the entire tool from rotating when significant torque is applied to the drive member. (’488 Patent, Abstract; col. 4:40-54).
- Technical Importance: The design provides a stable platform for applying substantial and precisely aligned force, intended to facilitate the removal of seized or press-fit king pins without damaging the surrounding, expensive axle and knuckle components. (’488 Patent, col. 4:55-60).
Key Claims at a Glance
- The complaint asserts infringement of at least independent claim 1. (Compl. ¶26).
- The essential elements of independent claim 1 are:
- A king pin removal tool comprising:
- a drive plate defining a drive opening;
- an anchor plate;
- a first drive member;
- a spacing system comprising first and second spacing rods; and
- a stabilizing system comprising first and second stabilizer plates, and first and second stabilizer bolts.
- The claim further requires a series of functional relationships, including that the stabilizing system is arranged such that its bolts "apply opposing forces on the axle member" to "prevent rotation of the drive plate" when the drive member is rotated. (’488 Patent, col. 5:29-64).
- The complaint does not explicitly reserve the right to assert dependent claims, though this is common practice in litigation.
III. The Accused Instrumentality
Product Identification
The accused product is a "90150 King Pin Press for Medium and Heavy Duty Trucks, King Pin Removal Tool," sold by Defendant Yin Le via an eBay storefront with the seller name "opallinternational." (Compl. ¶¶ 20, 29). The complaint refers to this and similar items as the "Accused Products." (Compl. ¶4).
Functionality and Market Context
The complaint alleges the accused product is a "direct copy" of Plaintiff's commercial embodiment of the ’488 patent. (Compl. ¶17). Its alleged function is to remove king pins from truck axle assemblies by applying mechanical force. (Compl. ¶28). The complaint provides annotated images to demonstrate that the product possesses the key structural components recited in the asserted patent claim. (Compl. ¶¶30-31). For example, a visual supplied in the complaint identifies the primary components of the accused tool, including the drive plate, anchor plate, and spacing system. (Compl. p. 7). The product is allegedly marketed as a replacement for "OEM 90150 King Pin Press" and uses the same SKU number that Plaintiff assigns to its patented product. (Compl. ¶16). The complaint alleges thirty-five units of the accused product were sold as of June 13, 2024. (Compl. ¶21, fn. 1).
IV. Analysis of Infringement Allegations
’488 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a drive plate defining a drive opening; an anchor plate; a first drive member; a spacing system comprising first and second spacing rods | The Accused Product is comprised of these structural elements, as identified in an annotated photograph. | ¶30 | col. 3:12-16 |
| a stabilizing system comprising first and second stabilizer plates, and first and second stabilizer bolts | The Accused Product’s stabilizing system is comprised of these components, as shown in an annotated photograph. | ¶31 | col. 3:16-18 |
| the spacing system supports the drive plate and the anchor plate relative to the king pin such that the first drive member is aligned with the king pin axis | The Accused Product's spacing system is shown supporting the plates relative to the king pin, with the drive member aligned along the king pin axis in a provided diagram. | ¶32 | col. 4:12-17 |
| the first drive member engages the drive plate such that rotation of the first drive member... displaces the king pin | The Accused Product's first drive member is alleged to engage the drive plate to displace the king pin when rotated, as illustrated in an in-use photograph. | ¶33 | col. 4:55-60 |
| the first and second spacing rod extends through the first [and second] stabilizer plate | The Accused Product’s spacing rods are shown extending through the stabilizer plates. | ¶34 | col. 5:49-52 |
| the first and second stabilizer plates are arranged such that the first and second stabilizer bolts apply opposing forces on the axle member such that the stabilizing system prevents rotation of the drive plate | The Accused Product’s stabilizer plates and bolts are alleged to be arranged to apply opposing forces to prevent rotation, as depicted in a diagram illustrating the direction of force from the stabilizer bolts. | ¶35 | col. 5:57-64 |
- Identified Points of Contention:
- Evidentiary Questions: The complaint alleges the accused product is a "direct copy," suggesting a theory of literal infringement. (Compl. ¶17). A primary point of contention will likely be evidentiary: does the accused product, which the complaint also characterizes as being of "sub-standard quality materials and tolerances," actually meet every structural and functional limitation of the claim? (Compl. ¶17). The defense may challenge whether the accused product's components function precisely as claimed.
- Functional Questions: The claim requires that the stabilizing system "prevents rotation of the drive plate." A technical question for the court will be how to interpret "prevents." Does it require absolute prevention of any movement, or does it mean substantially preventing rotation to a degree that allows the tool to function as intended? The answer will determine whether minor play or movement in the accused device is sufficient to avoid this limitation.
V. Key Claim Terms for Construction
The Term: "stabilizing system"
- Context and Importance: This system is presented as a key feature that distinguishes the invention from a simple press by counteracting the rotational forces generated during operation. Its definition is central to infringement, as it is tied to the critical function of preventing the tool from rotating off the workpiece.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party might argue that the claim itself provides the definition: a system "comprising first and second stabilizer plates, and first and second stabilizer bolts" that performs the recited functions. (’488 Patent, col. 5:39-42). This suggests any structure with these parts arranged to achieve the anti-rotation function could qualify.
- Evidence for a Narrower Interpretation: The specification describes a specific embodiment where the stabilizer plates pivot and engage "stop notches 192" on the spacing rods to lock their position. (’488 Patent, col. 4:49-54, Fig. 6). A party could argue this locking feature is a necessary part of the "stabilizing system" required to "prevent rotation," and that a system without it would fall outside the claim scope.
The Term: "apply opposing forces on the axle member"
- Context and Importance: This phrase describes the mechanism by which the stabilizing system achieves its anti-rotation function. The interpretation of this functional language will be critical to determining if the accused device operates in a manner covered by the patent.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The plain language suggests that as long as the stabilizer bolts push against generally opposing sides of the axle member to create a clamping or bracing effect, this limitation is met.
- Evidence for a Narrower Interpretation: Figure 6 and the corresponding description show the "head portions 240" of the stabilizer bolts making direct contact with the "axle beam 40." (’488 Patent, col. 4:43-44). A party may argue that this specific point of contact and force application on the "axle beam" itself is required, and that a system which braces against a different part of the larger axle assembly does not "apply opposing forces on the axle member" in the manner claimed.
VI. Other Allegations
- Indirect Infringement: The complaint does not plead separate counts for indirect (induced or contributory) infringement, focusing instead on the Defendant's direct infringement through sales, offers for sale, and importation. (Compl. ¶¶ 26, 38).
- Willful Infringement: The complaint alleges that the infringement was and continues to be willful. (Compl. ¶37). The factual basis for this allegation includes the Defendant’s alleged use of Plaintiff’s proprietary SKU number ("90150") to market the accused product, explicit references to replacing the "OEM 90150 King Pin Press," and the alleged copying of a product that Plaintiff marks in compliance with 35 U.S.C. § 287. (Compl. ¶¶ 15-18).
VII. Analyst’s Conclusion: Key Questions for the Case
This case presents a dispute over an alleged direct copy of a patented mechanical tool. The central questions for the court appear to be:
A core issue will be one of evidentiary confirmation: Will discovery confirm that the accused product, alleged to be a "direct copy," contains every structural element and performs every function recited in Claim 1? Or will the product's alleged "sub-standard quality" result in a failure to meet a claim limitation, particularly the functional requirement that the stabilizing system "prevents rotation"?
A second key issue will be one of claim scope: How broadly will the court construe the functional limitations of the claims? Specifically, does the requirement that the stabilizing system "prevents rotation" and "applies opposing forces" demand the specific structural arrangements shown in the patent's preferred embodiments, or does it encompass any configuration that achieves a similar result?
Finally, a central question for damages will be willfulness: Do the allegations that the Defendant knowingly used Plaintiff’s product number and marketed a "knock-off" product rise to the level of egregious conduct required to support a finding of willful infringement and justify an award of enhanced damages?