Tajm LLC v. Sunset Performance Engines LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: TAJM, LLC d/b/a MIKE LAWS PERFORMANCE (Florida)
  • Defendant: Sunset Performance Engines, LLC. (Texas)
  • Plaintiff’s Counsel: THE EMANUELSON FIRM, P.C.
• Case Identification: 4:23-cv-01066, E.D. Tex., 12/04/2023
• Venue Allegations: Venue is alleged to be proper because Defendant is a resident of the district and a substantial part of the events giving rise to the action occurred there.
• Core Dispute: Plaintiff alleges that Defendant’s sale of racing carburetors and associated components infringes a design patent covering a carburetor body and a utility patent directed to a removable fuel jet tube system.
• Technical Context: The technology relates to high-performance carburetors used in racing engines, where the ability to quickly and precisely tune fuel delivery is a significant competitive factor.
• Key Procedural History: The complaint does not reference any prior litigation, Inter Partes Review (IPR) proceedings, or licensing history related to the patents-in-suit.

Case Timeline

Date	Event
2013-12-11	U.S. Design Patent D748,149 Priority Date
2014-09-23	U.S. Patent 10,036,357 Priority Date
2016-01-26	U.S. Design Patent D748,149 Issue Date
2018-07-31	U.S. Patent 10,036,357 Issue Date
2023-12-04	Complaint Filing Date

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

U.S. Design Patent D748,149 - "Carburetor"

• Patent Identification: U.S. Design Patent D748,149, entitled “Carburetor,” issued January 26, 2016. (Compl. ¶8-9).

The Invention Explained

• Problem Addressed: Design patents do not articulate technical problems; they protect ornamental appearance. The complaint describes the subject of the patent as a "unique and novel carburetor body design." (Compl. ¶11).
• The Patented Solution: The patent claims the ornamental design for a carburetor body as depicted in its figures. (D'149 Patent, Claim, Figs. 1-8). Key visual features include a generally rectangular body with dual, figure-eight-shaped openings passing through it. (D’149 Patent, Fig. 3).
• Technical Importance: The complaint alleges the design is for a "twin blade" carburetor, which incorporates dual openings for a primary and secondary throttle arrangement. (Compl. ¶11).

Key Claims at a Glance

• Design patents have a single claim. The asserted claim is for "The ornamental design for a carburetor, as shown and described." (D’149 Patent, Claim).

U.S. Patent 10,036,357 - "Fuel Jet Tube and Related Methods"

• Patent Identification: U.S. Patent 10,036,357, entitled “Fuel Jet Tube and Related Methods,” issued July 31, 2018. (Compl. ¶14-15).

The Invention Explained

• Problem Addressed: The patent's background section explains that conventional fuel jet tubes ("stake tubes") are non-removably fixed into carburetor bodies. (’357 Patent, col. 1:22-25). Adjusting or replacing these tubes is a difficult process that often requires specialized machining and can result in damage to the carburetor, making rapid tuning for different race conditions impractical. (’357 Patent, col. 1:25-33).
• The Patented Solution: The invention is a removable fuel jet tube system. The tube is designed with a fastening portion, such as threads, and a tool connecting surface that allows it to be easily installed and removed from the carburetor's throttle body without damage. (’357 Patent, Abstract; col. 2:49-54). This design allows users, such as race teams, to quickly swap out fuel jets with different internal diameters to tune engine performance "just minutes before a race." (’357 Patent, col. 2:48-53). The overall system is illustrated in Figure 8, which depicts the removable tube (30) with its fastening portion (17) installed in the throttle body (1). (’357 Patent, Fig. 8).
• Technical Importance: The invention provides for rapid, non-destructive, and precise fuel system tuning in a high-performance setting, a capability the patent asserts was not possible with conventional stake tube designs. (’357 Patent, col. 2:53-61).

Key Claims at a Glance

• The complaint alleges infringement of "at least one claim" without specifying which. (Compl. ¶27). Independent claim 1 is representative.
• The essential elements of independent claim 1 include:
  • A tube with distinct proximal and distal portions of different outer diameters.
  • A "fastening portion" connected to the tube with an outer diameter larger than the tube portions.
  • An "abutment face" on the fastening portion that is "angling away from the tube."
  • A "threaded portion" on the fastening portion.
  • A "tool connecting surface" comprising a "plurality of tool engagement grooves."
  • A specific relationship wherein the threaded portion extends from adjacent to a bottom portion of the grooves.
• The complaint does not explicitly reserve the right to assert dependent claims.

III. The Accused Instrumentality

Product Identification

The complaint identifies the accused instrumentalities as "racing engines," "carburetors," and "fuel jet tubes" that Defendant sells. (Compl. ¶19-21). More specifically, it accuses "Get’M Carburetors" and "Get’M Fuel Jet Tubes" sourced from a third-party entity, Get’M Performance Products LLC. (Compl. ¶23-25).

Functionality and Market Context

The complaint alleges the accused carburetors incorporate a "twin-blade style carburetor body" and that the accused fuel jet tubes are incorporated within these carburetors. (Compl. ¶26-27). It is alleged that Defendant markets and sells these products for use in racing engines. (Compl. ¶19, ¶22). The complaint does not provide further technical detail on the operation of the accused products.

IV. Analysis of Infringement Allegations

No probative visual evidence provided in complaint.

The complaint provides only conclusory allegations of infringement without mapping specific features of the accused products to the elements of the asserted patents.

D'149 Patent Infringement Allegations

The complaint alleges that the accused "Get'M Carburetors" incorporate a "twin-blade style carburetor body that infringes the claim of the ‘149 Patent." (Compl. ¶26). For a design patent, infringement is assessed under the "ordinary observer" test, which asks whether an ordinary observer, familiar with the prior art, would be deceived into believing the accused design is the same as the patented design. Without visual evidence of the accused carburetor, a direct comparison is not possible based on the complaint.

’357 Patent Infringement Allegations

The complaint alleges that the accused "Get'M Carburetors" incorporate "fuel jet tubes that infringe at least one claim of the ‘357 Patent." (Compl. ¶27). The complaint does not provide any specific facts detailing how the accused fuel jet tubes meet the limitations of any asserted claim. Therefore, a claim chart cannot be constructed from the pleading. The infringement theory rests on the allegation that the accused fuel jet tubes embody the patented removable system.

Identified Points of Contention

• Evidentiary Questions: A central issue for both patents will be evidentiary. Can Plaintiff produce evidence through discovery demonstrating that the accused "Get'M Carburetor" has an ornamental design substantially similar to the '149 Patent's figures? Further, can Plaintiff show that the accused "Get'M Fuel Jet Tube" meets every limitation of an asserted claim of the ’357 Patent, including the specific geometric and structural features required?
• Technical Questions: For the ’357 Patent, a key question will be whether the accused products actually function as claimed. For example, do they possess a "tool connecting surface" with "grooves" and an "abutment face angling away from the tube," or do they use a different structure for attachment and sealing?

V. Key Claim Terms for Construction

The complaint does not identify any claim terms for construction. However, based on the language of independent claim 1 of the '357 Patent, the following terms may become central to the dispute.

• The Term: "abutment face angling away from the tube"

  • Context and Importance: This term defines the geometry of the sealing surface between the removable tube and the carburetor body. The scope of "angling away" will be critical to determining infringement, as it distinguishes the claimed invention from a simple flat-faced seal. Practitioners may focus on this term because infringement could hinge on whether the accused product's sealing surface meets this specific geometric requirement.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification states that the "abutment face 36 may be sloped," which could support an interpretation covering various non-perpendicular sealing surfaces. (’357 Patent, col. 6:60-61).
    • Evidence for a Narrower Interpretation: The claim language is specific, requiring the face to be "angling away...and extending to the second abutment end." (’357 Patent, col. 11:13-17). A party could argue this, in conjunction with the depiction of a distinct linear slope in Figure 7, limits the claim to the specific embodiment shown, excluding other sealing geometries.

• The Term: "tool connecting surface provided by a plurality of tool engagement grooves"

  • Context and Importance: This language defines the mechanism for engaging a tool to install or remove the fuel jet tube. The definition of "grooves" could be a focal point of the dispute.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification suggests this feature is exemplary, stating that "any appropriate tool mating surface may be used so as to enable the attachment of fuel jet tube 30." (’357 Patent, col. 5:62-64). This could support a functional interpretation covering various engagement mechanisms.
    • Evidence for a Narrower Interpretation: A party seeking a narrower construction may argue that the explicit use of the word "grooves" in the claim, as depicted by the notches (38) in Figure 5, limits the scope to that specific structure and excludes other common tool interfaces, such as a hexagonal head.

VI. Other Allegations

Indirect Infringement

The complaint does not contain explicit counts or allegations for indirect infringement (inducement or contributory infringement). The infringement counts are limited to direct infringement under 35 U.S.C. § 271. (Compl. ¶31, 36).

Willful Infringement

The complaint alleges that Defendant's infringement of both patents "has been conducted with knowledge" of the patents and "has been done deliberately and willfully." (Compl. ¶32, 37). The factual basis for this alleged pre-suit knowledge is not provided. The prayer for relief requests enhanced damages for conduct occurring after notice of the complaint, suggesting a primary focus on a post-filing willfulness theory. (Compl., Prayer ¶g).

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

1. Evidentiary Sufficiency: A primary hurdle for the Plaintiff will be to develop factual support for its bare-bones complaint. Can it, through discovery, produce evidence that the accused "Get'M" products possess an ornamental design substantially the same as the '149 Patent and meet every structural and geometric limitation of an asserted claim of the '357 Patent?

2. Definitional Scope: The case for the '357 Patent may turn on claim construction. Specifically, will the court construe key terms like "abutment face angling away from the tube" narrowly to the specific sloped embodiments shown in the patent, or more broadly to encompass any functionally equivalent sealing surface, potentially altering the scope of infringement?

3. Basis for Willfulness: A third question relates to the willfulness claim. Can the Plaintiff substantiate its conclusory allegation of pre-suit knowledge, or will the claim be limited to proving that Defendant's conduct was egregious after receiving notice of the lawsuit?