DCT
3:17-cv-00363
Fredrick v. Hall
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Gray G. Fredrick (Tennessee)
- Defendant: Robert Hall and The Driven Man, LLC (Tennessee)
- Plaintiff’s Counsel: Luedeka Neely Group, P.C.
- Case Identification: 3:17-cv-00363, E.D. Tenn., 08/18/2017
- Venue Allegations: Venue is alleged to be proper based on the Defendants’ residency, location of their principal place of business, and their commercial activities within the district.
- Core Dispute: Plaintiff alleges that Defendants’ hydraulic clutch firewall brackets, sold for automotive modification, infringe a patent for a universal mounting adaptor.
- Technical Context: The technology addresses the aftermarket automotive modification sector, specifically for retrofitting hydraulic clutch systems into vehicles like "muscle cars" and "street rods."
- Key Procedural History: The complaint alleges a prior business relationship where Plaintiff was a 40% owner of Defendant The Driven Man, LLC (TDM) and permitted TDM to sell products covered by the patent. This permission was allegedly revoked upon Plaintiff's termination from TDM. The complaint notes a cease-and-desist letter was sent to Defendants, who allegedly continued to sell the accused products, and further alleges that Defendants had previously attempted to compel Plaintiff to transfer ownership of the patent.
Case Timeline
| Date | Event |
|---|---|
| 2009-05-06 | ’920 Patent Priority Date |
| 2012-07-24 | ’920 Patent Issue Date |
| 2016-11-15 | Plaintiff allegedly dismissed from Defendant TDM |
| 2016-11-17 | Plaintiff sends cease-and-desist letter |
| 2017-08-18 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,225,920 - "Hydraulic Clutch Master Cylinder Firewall Mounting Adaptor"
The Invention Explained
- Problem Addressed: When modifying cars to use a hydraulic clutch, mounting the master cylinder to the vehicle's firewall presents challenges. The firewall's sheet metal is often too thin and requires reinforcement. More importantly, the master cylinder's push-rod must be precisely aligned with the clutch pedal arm's "line-of-action" to prevent premature wear and operational failure, an alignment that differs between vehicles. Finally, master cylinder stroke must be limited to prevent over-travel, a task often requiring custom, trial-and-error solutions. (’920 Patent, col. 1:41-65, col. 2:1-9).
- The Patented Solution: The invention is a universal mounting apparatus designed to solve these problems. It consists of a reinforcing plate and a mounting bracket that clamp the firewall between them for stability. The key feature is a separate cylinder bracket that holds the master cylinder and is pivotally connected to the mounting bracket. This pivotal connection allows for angular adjustment of the master cylinder about a horizontal axis, enabling precise alignment with the clutch pedal arm before being locked into position. The design also incorporates an adjustable stop on the threaded push-rod to limit pedal travel. (’920 Patent, Abstract; col. 2:31-51).
- Technical Importance: The invention provides a standardized and adjustable solution for a common installation challenge in the aftermarket automotive performance market, replacing custom fabrication and guesswork. (Compl. ¶26-27).
Key Claims at a Glance
- The complaint asserts independent claims 1, 9, and 20, as well as dependent claims. (Compl. ¶35).
- Independent Claim 1 (Apparatus): A universal mounting apparatus comprising:
- a cylinder with an axis and a displaceable piston/push-rod;
- a cylinder bracket providing for pivotal connection about an axis perpendicular to the cylinder axis;
- a firewall reinforcing plate with an opening for the push-rod;
- a mounting bracket with arms to create the pivotal axis for connecting the cylinder bracket;
- an angularly free connector for the push-rod; and
- means for locking the selected angular orientation.
- Independent Claim 9 (Apparatus): A more structurally-defined apparatus comprising:
- a firewall reinforcing plate for the driver side;
- a "U" shaped mounting bracket with opposed arms for the engine side, which sandwiches the firewall with the reinforcing plate;
- a cylinder bracket with arms configured for pivotal engagement with the mounting bracket's arms; and
- means for locking the cylinder bracket at a selected angle.
- Independent Claim 20 (Method): A method for installing a hydraulic clutch master cylinder, comprising the steps of:
- bolting a reinforcing plate to the firewall;
- mounting the cylinder on a pivotable bracket;
- connecting the bracket to the reinforcing plate;
- connecting the push-rod to the pedal arm;
- adjusting the angle of the pivotable bracket;
- locking the bracket angle; and
- providing an adjustable stop on the push-rod.
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are "hydraulic clutch firewall brackets" made, sold, and supported by Defendants Robert Hall and The Driven Man, LLC. (Compl. ¶35).
Functionality and Market Context
- The complaint alleges these brackets are used for installing hydraulic clutch systems in automobiles, particularly in the "muscle cars" or "street rods" market segment. (Compl. ¶26). The functionality described is enabling the "application of a clutch master cylinder to the firewall," providing for "axial adjustment on the horizontal axis," and including an "integrated pedal stop." (Compl. ¶26). The complaint alleges that the Defendants' ongoing business is "substantially predicated" on the sale of these products and that their website advertises the brackets as "patented," which is alleged to be a reference to the ’920 patent. (Compl. ¶29, 31).
No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint does not provide a claim chart or detailed mapping of the accused products to the patent claims. The following tables summarize the infringement theory based on the general allegations in the complaint.
’920 Patent Infringement Allegations (based on Claim 1)
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a universal mounting apparatus for installing an SAE standard hydraulic clutch master cylinder on an automobile firewall | Defendants' sale of "hydraulic clutch firewall brackets" for automotive installation. | ¶35 | col. 6:25-29 |
| a cylinder bracket having SAE standard dimensioned installation provisions... and providing for pivotal connection... | The accused brackets are alleged to provide for "axial adjustment on the horizontal axis." | ¶26 | col. 6:33-37 |
| a firewall reinforcing plate... and an opening for allowing the threaded push-rod distal end to extend therethrough | The accused brackets are part of a system for mounting to a firewall. | ¶26 | col. 6:38-41 |
| a mounting bracket, with arms configured to provide the aforesaid pivotal axis, for connecting the cylinder bracket... | The accused brackets are alleged to provide for "axial adjustment on the horizontal axis," which implies a pivotal connection. | ¶26 | col. 6:42-45 |
| an angularly free connector for connecting the push-rod distal end at the pedal arm connection point | The complaint does not provide sufficient detail for analysis of this specific element. | N/A | col. 6:46-48 |
| means for locking the selected angular orientation so that the cylinder axis is closely aligned with the line-of-action | The complaint does not provide sufficient detail for analysis of this specific element, but locking is inherent to a stable mount. | N/A | col. 6:49-51 |
’920 Patent Infringement Allegations (based on Claim 9)
| Claim Element (from Independent Claim 9) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a firewall reinforcing plate, including bolting holes for attachment thereof to the automobile firewall on the driver side | The accused brackets are alleged to be part of a system for mounting to a firewall. | ¶26 | col. 6:48-51 |
| a mounting bracket with a base portion having opposed arms extending on each side in a "U" configuration... for attachment thereto and sandwiching the firewall... | The complaint does not provide sufficient detail for analysis of the specific "U" configuration or sandwiching functionality. | N/A | col. 6:52-59 |
| a cylinder bracket having a central portion with arms extending on each side, configured for pivotal engagement with the opposed arms of the mounting bracket... | The accused brackets are alleged to provide for "axial adjustment on the horizontal axis," implying a pivotal engagement mechanism. | ¶26 | col. 6:60-65 |
| means for locking the cylinder bracket at a selected angle about the pivotal axis. | The complaint does not provide sufficient detail for analysis of this specific element. | N/A | col. 7:1-2 |
- Identified Points of Contention:
- Technical Questions: The complaint's allegations are conclusory. A primary question will be evidentiary: what is the precise structure and mechanism of the accused brackets? Discovery will be required to determine if they actually perform pivotal adjustment and possess a "locking means" as claimed, or if they achieve adjustability through a different, non-infringing mechanism.
- Scope Questions: What is the scope of the "means for locking" limitation in Claims 1 and 9? As a means-plus-function term, its scope is limited to the structures disclosed in the specification (e.g., locking bolts in arcuate slots, lock washers) and their equivalents. The infringement analysis will depend on whether the accused products contain these specific structures.
V. Key Claim Terms for Construction
The Term: "means for locking the selected angular orientation" (Claim 1) and "means for locking the cylinder bracket at a selected angle" (Claim 9).
- Context and Importance: This is a means-plus-function limitation under 35 U.S.C. § 112, para. 6. The function is locking the adjustable angle of the cylinder bracket. Its construction is critical because infringement requires the accused device to incorporate the corresponding structure disclosed in the patent's specification, or a structural equivalent. The ability to lock the alignment is a core functional aspect of the invention.
- Intrinsic Evidence for Interpretation: The scope of this term will be defined by the corresponding structures described in the specification. Parties will likely point to several disclosed embodiments:
- The specification describes "a locking bolt in an arcuate slot or locking washers on the bolted pivotal connection" as known means. (’920 Patent, col. 2:48-51).
- Figure 7 and its description disclose "lock washers 64 placed at both sides of mounting holes" that, when clamped by bolts, "will lock master cylinder 42 securely in position." (’920 Patent, col. 4:26-32).
- The patent also discloses using a "locking compound well known to those skilled in the mechanical arts" such as LOCTITE™. (’920 Patent, col. 4:33-37).
The Term: "angularly free connector" (Claim 1).
- Context and Importance: This term defines the nature of the connection between the push-rod and the pedal arm. Its definition is important for determining infringement, as a simple pin connection might not meet the definition if it is construed narrowly. Practitioners may focus on this term because the specific type of joint used could be a point of non-infringement.
- Intrinsic Evidence for Interpretation:
- Evidence for a Narrower Interpretation: The specification explicitly discloses a "ball-joint, angularly free connector 16" that provides a "self centering connection." (’920 Patent, col. 3:34-36). A defendant may argue this disclosure limits the term to ball joints or other connectors that provide similar multi-axis, self-centering freedom.
- Evidence for a Broader Interpretation: A plaintiff may argue that the claim term itself is not limited to a "ball-joint" and that the description is merely an exemplary embodiment. A broader reading could encompass any connector that allows for some angular movement to accommodate the arc of the pedal arm, even if it is not a true ball joint.
VI. Other Allegations
- Indirect Infringement: The complaint alleges Defendants contributed to and induced infringement of the ’920 patent. (Compl. ¶35). The factual basis for this allegation appears to be the sale of the accused brackets, which are alleged to be a key component of the patented system, with knowledge of the patent and with the intent that customers will use them in an infringing manner.
- Willful Infringement: The complaint alleges that Defendants' infringement was and is "knowingly, deliberately, willfully and unlawfully" committed. (Compl. ¶6). The factual basis for this claim includes allegations of Defendants' pre-suit knowledge of the patent arising from their prior business relationship with the inventor, a cease-and-desist letter sent by Plaintiff, Defendants' alleged prior attempts to acquire the patent, and their continued sales after being notified of the infringement. (Compl. ¶4-8, 21-22, 30). The allegation that Defendants' website marks the accused product as "patented" is also presented as evidence of knowledge. (Compl. ¶31).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue appears to be one of permissible use and estoppel: The complaint states Plaintiff "allowed TDM to use the subject matter claimed in the ’920 patent" during his employment. (Compl. ¶28). The case may turn on whether this past permission created an implied license or estoppel that survived Plaintiff's termination, or whether the termination effectively revoked any right to use the patented technology.
- A key evidentiary question will be one of technical correspondence: The complaint makes conclusory infringement allegations without providing specific evidence of how the accused brackets meet the claim limitations. The outcome will depend heavily on discovery and whether the accused products are found to incorporate the specific "pivotal" adjustment and "means for locking" structures recited in the claims and described in the patent specification.
- The dispute over willfulness will likely be a major focus. Given the detailed allegations regarding the parties' prior business relationship, the cease-and-desist letter, and Defendants' alleged attempts to acquire the patent, the court will have to examine the totality of the circumstances to determine whether Defendants' post-notice conduct rises to the level of egregious behavior required for enhanced damages.