DCT
1:24-cv-01493
Uriah Products LLC v. Winston Products LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Uriah Products, LLC (Missouri)
- Defendant: Winston Products LLC (Ohio)
- Plaintiff’s Counsel: Calfee, Halter & Griswold LLP
- Case Identification: 1:24-cv-01493, N.D. Ohio, 08/30/2024
- Venue Allegations: Venue is alleged to be proper in the Northern District of Ohio because Defendant resides in the district, has a principal place of business there, and has allegedly committed acts of infringement within the district.
- Core Dispute: Plaintiff alleges that Defendant’s adjustable trailer hitch mounts infringe a patent related to the mechanical design of adjustable hitch assemblies.
- Technical Context: The technology concerns adjustable trailer hitches, a common accessory in the automotive and towing market designed to accommodate different trailer and vehicle heights.
- Key Procedural History: A significant procedural event is the issuance of an Ex Parte Reexamination Certificate on August 12, 2024, which confirmed the patentability of all 16 claims of the patent-in-suit. The complaint alleges Defendant had knowledge of the patent via Plaintiff's public patent marking notices.
Case Timeline
| Date | Event |
|---|---|
| 2017-04-11 | '846 Patent Priority Date |
| 2020-12-08 | '846 Patent Issue Date |
| 2024-08-12 | '846 Patent Reexamination Certificate Issued |
| 2024-08-30 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Patent No. 10,857,846, “Adjustable Hitch Assembly,” issued December 8, 2020.
The Invention Explained
- Problem Addressed: The patent background identifies the relevant field as "ball and socket type hitch apparatus" for land vehicles, implying a need for improved designs within this established technology area (’846 Patent, col. 1:11-13).
- The Patented Solution: The invention is an adjustable hitch assembly featuring a generally L-shaped "hitch bracket" and a "vertically-adjustable hitch-ball mounting block." The mounting block, which holds the hitch ball, has a C-shaped cross-section defining a "slotted mortise hole" that slides vertically along a "tenon portion" of the L-shaped bracket to adjust its height (’846 Patent, Abstract; col. 3:1-12). The patent describes the hitch bracket as preferably being a monolithic aluminum extrusion that includes a "wedge-shaped, gusset-form enlargement" to reinforce the angle between the horizontal and vertical portions (’846 Patent, col. 2:58-63).
- Technical Importance: The design purports to provide a strong, adjustable connection, with specific embodiments detailing production from a monolithic aluminum extrusion and a gusseted L-shape, which may suggest an aim to enhance durability and load-bearing capacity (’846 Patent, col. 2:61-63).
Key Claims at a Glance
- The complaint focuses on independent claim 1.
- The essential elements of independent claim 1 include:
- A "hitch bracket" that is "generally L-shaped" with horizontal drawbar and vertical tenon portions.
- A "vertically-adjustable hitch-ball mounting block" comprising a "web, arms extending out of the web, and in-turned flanges on the arms" that collectively define a "slotted mortise hole" for receiving the tenon portion.
- A "plurality of hitch pins" and "one or more hitch balls."
- A requirement that the mounting block's web defines a rear wall for the mortise hole and is formed with a vertical "through hole" to receive the hitch ball's shank.
- A "pin-receiving hole" in the rear wall of the mounting block, adapted for a pin to secure the hitch ball.
- The complaint notes that Plaintiff may assert additional claims of the ’846 Patent (Compl. ¶21).
III. The Accused Instrumentality
Product Identification
- The "Accused Products" are identified as the "Ultra-Tow Ball Mount" and the "TowSmart Aluminum Adjustable Tri-Ball Mount" (Compl. ¶14).
Functionality and Market Context
- The complaint alleges these products are adjustable trailer hitch ball mounts used for towing (Compl. ¶14). The Ultra-Tow Mount is allegedly distributed and sold to Northern Tool and Equipment Co., Inc., while the TowSmart Mount is identified as a brand of Defendant Winston, distributed through retailers such as AutoZone (Compl. ¶15-16). The complaint includes an image of Plaintiff's own "Aluma-Tow Hitch Ball Mount" (Compl. ¶10, Figure 1) and alleges the Accused Products, shown in Figure 2 and Figure 3, infringe the patent protecting such technology (Compl. ¶14).
IV. Analysis of Infringement Allegations
The complaint provides claim charts for both accused products; the following summary is based on the allegations against the Ultra-Tow Mount.
Claim Chart Summary: '846 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An adjustable hitch assembly, comprising: a hitch bracket; a vertically-adjustable hitch-ball mounting block; a plurality of hitch pins; one or more hitch balls; | The Ultra-Tow Mount is alleged to be an adjustable hitch assembly containing these components. The complaint provides an image indicating the hitch bracket, mounting block, pins, and balls. | ¶22, pp. 7-8 | col. 5:23-27 |
| wherein the hitch bracket is generally L-shaped and comprises a generally horizontal drawbar portion...as well as a generally-vertical tenon portion... | The accused hitch bracket is alleged to be L-shaped, with a horizontal drawbar (A) and a vertical tenon (B), both with rectilinear cross-sections. This is supported by an annotated image. | ¶22, p. 9 | col. 5:28-33 |
| wherein the vertically-adjustable hitch-ball mounting block comprises a web, arms extending out of the web, and in-turned flanges on the arms...which collectively define a slotted mortise hole... | The accused mounting block allegedly has a web (A), arms (B), and in-turned flanges (C) that form a slotted mortise hole (D) to receive the tenon. An annotated image illustrates these alleged components. | ¶22, p. 9 | col. 5:34-42 |
| wherein the vertically-adjustable hitch-ball mounting block is vertically adjustable on the post portion of the hitch bracket; | The accused mounting block is shown in an image as being vertically adjustable on the post (tenon) portion of the bracket. | ¶22, p. 10 | col. 5:43-44 |
| wherein the web of the vertically-adjustable hitch-ball mounting block defines a rear wall for the slotted mortise hole and is formed with a generally vertical through hole; | The accused mounting block allegedly has a rear wall with a vertical through hole for the hitch ball. An annotated diagram shows this through hole. | ¶22, p. 10 | col. 5:45-48 |
| the hitch ball comprises a cylindrical shank base that transitions into a neck which in turn transitions into a ball head; | Each hitch ball of the accused product is alleged to have the claimed structure of a shank, neck, and ball head. | ¶22, p. 10 | col. 5:49-51 |
| said cylindrical shank base of the hitch ball is received in the through hole in the web of the vertically-adjustable hitch-ball mounting block; | The shank of the accused hitch ball is alleged to be received in the through hole of the mounting block. | ¶22, p. 11 | col. 5:51-54 |
| said rear wall for slotted mortise hole...is formed with a pin-receiving hole into the through hole and adapted for a pin to secure the hitch ball. | The mounting block allegedly includes a pin-receiving hole that allows a pin to secure the hitch ball. The complaint provides a diagram showing the pin-receiving hole intersecting the main through hole. | ¶22, p. 11 | col. 5:55-58 |
Identified Points of Contention
- Scope Questions: Claim 1 requires a mounting block with a "web, arms extending out of the web, and in-turned flanges on the arms" that define a "slotted mortise hole." A central question will be whether the accused products' mounting blocks possess this specific C-shaped structure, as depicted in the complaint’s annotated image (Compl. ¶22, p. 9), or if their internal geometry differs in a way that falls outside the claim's scope.
- Technical Questions: A potential point of dispute is the interpretation of "pin" in the final limitation ("a pin to secure the hitch ball"). While the patent specification describes threaded cap screws for this purpose (’846 Patent, col. 4:13-16), the claim uses the broader term "pin." The analysis will question what specific mechanism the accused products use to secure the ball and whether it meets this limitation, either literally or under the doctrine of equivalents.
V. Key Claim Terms for Construction
The Term: "hitch bracket"
Context and Importance: The patent specification repeatedly describes the preferred embodiment of the "hitch bracket" as including a "wedge-shaped, gusset-form enlargement" that fills the inside corner of its L-shape (’846 Patent, Abstract; col. 2:61-63). Independent claim 1, however, only recites that the bracket is "generally L-shaped." Practitioners may focus on this term because its construction—whether it must include the gusset—could be dispositive for infringement if the accused products lack that feature.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The Plaintiff may argue that the plain language of claim 1 does not recite a gusset, and under the principles of claim differentiation, limitations from the specification should not be imported into the claim.
- Evidence for a Narrower Interpretation: The Defendant may argue that the gusset is presented as a key feature of the invention throughout the specification and abstract, and that the term "hitch bracket" should be construed to include it to capture the actual invention and preserve its validity.
The Term: "slotted mortise hole"
Context and Importance: This term defines the channel in the mounting block that engages with the bracket's vertical tenon, forming the core of the adjustable mechanism. Its construction will determine what types of block-and-tenon connections fall within the patent's scope.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Plaintiff may contend the term should be given its plain and ordinary meaning, covering any slot or channel that receives the tenon for sliding adjustment.
- Evidence for a Narrower Interpretation: The patent defines this hole as being collectively formed by a "web," "arms," and "in-turned flanges" (’846 Patent, col. 5:35-39). A defendant may argue that this detailed description limits the term to a specific C-shaped channel and that a simple rectangular channel or other geometry would not infringe.
VI. Other Allegations
- Indirect Infringement: The complaint makes a conclusory allegation of indirect infringement (Compl. ¶27) but does not plead specific underlying facts to support either induced or contributory infringement, such as allegations of specific intent or the provision of a non-staple component.
- Willful Infringement: Willfulness is alleged based on Defendant’s purported knowledge of the ’846 Patent. The complaint alleges this knowledge arises from Plaintiff’s patent marking activities, citing a URL to a webpage listing its patents (Compl. ¶26). The complaint characterizes the continued sale of the Accused Products as "deliberate and willful" (Compl. ¶31).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "hitch bracket" in claim 1 be interpreted to cover an L-shaped bracket without the "wedge-shaped, gusset-form enlargement" that is described as a key feature in the patent's specification and abstract? The resolution of this claim construction dispute may significantly narrow or affirm the asserted scope of the patent.
- A key evidentiary question will be one of structural correspondence: do the accused mounting blocks contain the specific geometry of a "slotted mortise hole" that is "collectively define[d]" by a "web, arms... and in-turned flanges," as required by claim 1? While the complaint’s annotated images present a theory of infringement, the actual internal construction of the accused products will be a central factual dispute to be resolved through discovery.
- A third critical factor will be the procedural posture: how will the recent ex parte reexamination, which confirmed the patentability of all claims, affect the litigation? This history strengthens the patent's presumption of validity and could impact the court's view on willfulness and the overall merits of infringement and validity defenses.