DCT
3:22-cv-02414
Lund Motion Products Inc v. Earl Owen Co Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Lund Motion Products, Inc. d/b/a AMP Research (Delaware)
- Defendant: Earl Owen Company, Inc. (Texas)
- Plaintiff’s Counsel: Kane Russell Coleman Logan PC; Knobbe Martens Olson & Bear, LLP
- Case Identification: 3:22-cv-02414, N.D. Tex., 10/28/2022
- Venue Allegations: Plaintiff alleges venue is proper in the Northern District of Texas because Defendant is a Texas corporation with an address of incorporation within Dallas County.
- Core Dispute: Plaintiff alleges that Defendant’s aftermarket retractable vehicle steps infringe four patents related to the automated control and mechanical structure of such systems.
- Technical Context: The technology involves aftermarket retractable running boards for vehicles, primarily trucks and SUVs, which automatically deploy when a vehicle door is opened and retract when it is closed by interfacing with the vehicle's existing computer system.
- Key Procedural History: The complaint alleges that Defendant is also a distributor for Plaintiff’s own patented "PowerStep" products and was therefore on notice of the patents-in-suit and their industry significance prior to the filing of the lawsuit.
Case Timeline
| Date | Event |
|---|---|
| 2013-11-01 | Priority Date for ’667, ’449, ’717, and ’395 Patents |
| 2016-03-01 | U.S. Patent No. 9,272,667 Issues |
| 2016-12-06 | U.S. Patent No. 9,511,717 Issues |
| 2016-12-27 | U.S. Patent No. 9,527,449 Issues |
| 2021-12-14 | U.S. Patent No. 11,198,395 Issues |
| 2022-10-28 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,272,667 - “Automated Retractable Vehicle Step”
- The Invention Explained:
- Problem Addressed: The patent’s background describes that aftermarket installation of automated retractable step assists is often complex and expensive, typically requiring skilled technicians to perform modifications such as cutting, splicing, or tapping into existing vehicle wiring, particularly in or around the vehicle doors (US9272667B2, col. 1:47-54).
- The Patented Solution: The invention is a "plug-and-play" step assist system designed to simplify installation. It includes a vehicle interface that connects to a pre-existing electronics port on the vehicle, such as an On-Board Diagnostic (OBD) port, to receive data like door open/closed status. A controller then uses this data to automatically deploy or retract the step, thereby avoiding direct modification of the vehicle's door wiring (US9272667B2, col. 8:24-34; Fig. 2A).
- Technical Importance: This approach significantly reduced the complexity, cost, and risk of installing aftermarket automated running boards, making the technology more accessible to consumers for do-it-yourself installation (US9272667B2, col. 1:47-54).
- Key Claims at a Glance:
- The complaint asserts independent Claim 1 (Compl. ¶31).
- The essential elements of Claim 1 are:
- A powered retractable vehicle step assist system.
- A stepping member movable between a retracted and a deployed position.
- At least one support member connected to the stepping member.
- A motor operably coupled to the support member to effectuate movement.
- A vehicle interface configured to connect with an already existing electronics port of the vehicle and to electronically receive data generated by existing vehicle electronics.
- A controller configured to use the received data to cause the motor to move the stepping member.
- The received data comprises door opened/closed status information originating from door electronics that do not incorporate any wireless sensors.
- The complaint alleges infringement of "at least Claim 1," reserving the right to assert other claims (Compl. ¶31).
U.S. Patent No. 9,527,449 - “Controlling a Powered Vehicle Step”
- The Invention Explained:
- Problem Addressed: The patent identifies the technical challenge of integrating aftermarket accessories with a vehicle's native electronics without invasive modifications, such as splicing into wiring near the doors (US9527449B2, col. 1:22-38).
- The Patented Solution: The patent claims a method for controlling a powered vehicle step by electronically obtaining door status information directly from a vehicle's digital communication bus (such as a CAN bus accessed via an OBD port). This digital information is then processed by an algorithm in a controller to determine when to command the step's motor to deploy or retract the stepping deck (US9527449B2, Abstract; col. 2:4-10).
- Technical Importance: This method leverages a vehicle's standardized digital data stream for control signals, which may provide a more reliable and less installation-intensive solution than tapping into analog wiring harnesses (US9527449B2, col. 2:11-14).
- Key Claims at a Glance:
- The complaint asserts independent Claim 12 (Compl. ¶46).
- The essential elements of Claim 12 are:
- A method of controlling an after-market powered vehicle step system.
- Electronically obtaining door status information from a digital communication bus of the vehicle.
- Electronically processing the door status information according to an algorithm to determine if movement of the stepping deck is appropriate.
- Commanding a motor to cause movement of the stepping deck between a retracted and a deployed position.
- The complaint alleges infringement of "at least Claim 12," reserving the right to assert other claims (Compl. ¶46).
U.S. Patent No. 9,511,717 - “Automated Retractable Vehicle Step”
- Technology Synopsis: This patent describes a vehicle step assist system intended to reduce installation complexity. The system uses a vehicle interface designed to connect to an existing electronics port, such as an OBD-II port, to receive data generated by the vehicle's electronics. A controller processes this data to issue commands to a step unit, automating its deployment and retraction without requiring installers to modify door wiring (US9511717B2, Abstract; col. 1:43-54).
- Asserted Claims: Claim 9 (Compl. ¶61).
- Accused Features: The complaint accuses the "Southern Truck GM Electric Step" of infringing by including a step unit, a vehicle interface that connects to the vehicle's OBD-II port to receive data, and a controller that uses this data to command the step unit's operations (Compl. ¶63-68).
U.S. Patent No. 11,198,395 - “Automated Retractable Vehicle Step”
- Technology Synopsis: This patent discloses a powered retractable vehicle step system comprising a specific mechanical linkage and an electronic control system. The mechanical aspect includes first and second support members, each having a support arm pivotable with respect to the vehicle and a support bracket pivotable with respect to the arm. The electronic system features a drive unit coupled to a support member, a vehicle interface to receive data from the vehicle's computer, and a controller to actuate the drive unit based on door status information (US11198395B2, Abstract; col. 6:8-41).
- Asserted Claims: Claim 1 (Compl. ¶74).
- Accused Features: The complaint alleges that the "Southern Truck GM Electric Step" embodies the claimed combination of a specific mechanical linkage (stepping member, first and second support members with support arms and brackets) and an electronic control system that operates based on door status data received from the vehicle's computer (Compl. ¶77-85).
III. The Accused Instrumentality
- Product Identification: The "Southern Truck Power Step Boards," manufactured by Woden, imported and rebranded by Southern Truck, LLC, and distributed by Defendant Earl Owen (Compl. ¶19-22). The "Southern Truck Lifts GM Electric Step Board" is a specifically identified example (Compl. ¶24).
- Functionality and Market Context: The Accused Products are aftermarket retractable running boards for vehicles (Compl. ¶23). They are alleged to feature a "motorized 'swing down and out' function that automatically extend[s] the steps when you open the door...and automatically retracts when the doors are closed" (Compl. ¶35). The system is alleged to use a "plug and play assembly, connecting directly to your...OBDII port" to receive control signals from the vehicle, eliminating the need for complex wiring (Compl. ¶38). The complaint provides an image from the installation instructions showing the OBD-II connection. (Compl. p. 9).
IV. Analysis of Infringement Allegations
9,272,667 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a stepping member...movable between a retracted position and a deployed position... | The Accused Products include a stepping member that automatically extends and retracts via a motorized "swing down and out" function. | ¶35 | col. 8:56-61 |
| at least one support member connectable with respect to an underside of the vehicle and connected to the stepping member... | The Accused Products include at least one support member that connects to the vehicle underside and the stepping member to provide support. | ¶36 | col. 8:62-67 |
| a motor operably coupled to the support member and capable of effectuating movement... | The Accused Products include a motor coupled to the support member to move the stepping member between positions. | ¶37 | col. 9:1-5 |
| a vehicle interface configured to connect with an already existing electronics port of the vehicle and to electronically receive data via the existing electronics port... | The Accused Products include a vehicle interface that connects to the vehicle’s OBD-II port to receive data. The complaint includes a photo illustrating this connection. (Compl. p. 9). | ¶38 | col. 9:6-12 |
| a controller...configured, in response to the data received from the already existing electronics port, to cause the motor to effectuate movement... | The Accused Products include a controller that receives data from the OBD-II port and, in response, causes the motor to move the stepping member. | ¶39 | col. 9:13-18 |
| wherein the data comprises door opened/closed status information originating from door electronics that do not incorporate any wireless sensors... | The complaint alleges the controller receives door opened/closed status data originating from wired door electronics, citing a GM service manual as evidence. | ¶40 | col. 9:19-24 |
- Identified Points of Contention:
- Scope Questions: The primary question of claim scope may be whether the term "already existing electronics port" can be construed to read on the vehicle’s OBD-II port, to which the accused product allegedly connects.
- Technical Questions: A key evidentiary question will be whether the data received by the accused product via the OBD-II port is, in fact, "door opened/closed status information originating from door electronics that do not incorporate any wireless sensors", as required by the claim and alleged by the complaint.
9,527,449 Patent Infringement Allegations
| Claim Element (from Independent Claim 12) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| electronically obtaining door status information from a digital communication bus of the vehicle... | The Accused Products are alleged to obtain door status information via a "plug and play assembly, connecting directly to [a]...OBDII port," which provides access to the vehicle's digital communication bus. | ¶52, ¶55 | col. 10:11-14 |
| electronically processing the door status information according to an algorithm to determine that movement of a stepping deck of the powered vehicle step system is appropriate... | The controller in the Accused Products is alleged to use an algorithm to process the door status information to determine when to automatically extend or retract the steps. | ¶53 | col. 10:15-19 |
| commanding a motor of the powered vehicle step system...to cause movement of the stepping deck between a retracted position and a deployed position. | The controller in the Accused Products is alleged to command the motor to perform the "motorized 'swing down and out' function" that moves the stepping board. The complaint includes images of the step in deployed and retracted positions. (Compl. p. 14). | ¶54 | col. 10:20-22 |
- Identified Points of Contention:
- Scope Questions: The analysis may focus on whether obtaining data from the OBD-II port constitutes obtaining information "from a digital communication bus" as understood in the art and defined by the patent.
- Technical Questions: A potential dispute may arise over whether the accused product's control logic performs the claimed step of "processing the door status information according to an algorithm", or if it constitutes a simpler, non-algorithmic function.
V. Key Claim Terms for Construction
The Term: "already existing electronics port" (’667 Patent, Claim 1)
Context and Importance: This term is central to the patent’s asserted novelty of a simplified, "plug-and-play" installation. Infringement of the ’667 Patent hinges on whether the accused product's connection to the vehicle’s OBD-II port falls within the scope of this term.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states that the system "plugs into, connects with, or otherwise interfaces with an existing vehicle connection to obtain door status" and that some embodiments "plug into or otherwise interface with an on-board diagnostic (OBD) port, for example" (US9272667B2, col. 1:49-54). The use of "for example" suggests OBD is illustrative, not exhaustive.
- Evidence for a Narrower Interpretation: The detailed descriptions and figures consistently depict the OBD port as the primary embodiment of the "electronics port" (US9272667B2, Fig. 2A, 3; col. 10:35-37). A party could argue that the invention, as disclosed, is focused on this specific, standardized port.
The Term: "digital communication bus" (’449 Patent, Claim 12)
Context and Importance: This term defines the source of the control signal for the claimed method. The infringement allegation rests on the premise that the data obtained from the OBD-II port is from such a bus.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification explains that "the system according to some aspects obtains the information via one or more existing communication buses of the vehicle, e.g., via a digital interface such as a serial data link" and explicitly identifies the OBD port as an interface for such a bus (US9527449B2, col. 2:1-6).
- Evidence for a Narrower Interpretation: The complaint does not provide sufficient detail for analysis of intrinsic evidence that may support a narrower interpretation. A party might attempt to distinguish between the physical port and the underlying bus itself, but the specification appears to treat the port as the access point to the bus.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement for all four asserted patents. Inducement is based on Defendant allegedly providing installation instructions that guide end-users to install and operate the Accused Products in an infringing manner (Compl. ¶41, ¶56). Contributory infringement is based on allegations that the Accused Products are a material part of the inventions, are not staple articles of commerce, and are known by Defendant to be especially adapted for infringement (Compl. ¶42, ¶57).
- Willful Infringement: While not pleaded as a separate count, the complaint lays a foundation for willfulness by alleging pre-suit knowledge. It asserts that Defendant is a distributor of Plaintiff's patented "PowerStep" products and was "necessarily aware" of them (Compl. ¶28). The complaint points to Defendant's own website, which allegedly features a video advertising Plaintiff's product with the text "[p]atented design," as evidence of this knowledge (Compl. ¶29).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the claim terms "already existing electronics port" and "digital communication bus" be construed to cover the vehicle's standard OBD-II port, which the Accused Products allegedly use to receive control signals? The outcome of claim construction on these terms will be central to the direct infringement analysis for the ’667 and ’449 patents.
- A key evidentiary question will be one of technical operation: what is the precise nature of the data the accused system receives from the OBD-II port, and how does its controller process that data? The case will require factual determinations as to whether the system's function meets specific claim limitations, such as receiving data "originating from door electronics that do not incorporate any wireless sensors" and "processing...according to an algorithm."
- A third central question will concern the defendant's state of mind: does the evidence that Defendant also distributes and advertises Plaintiff's patented products establish the requisite knowledge and intent to support claims for indirect infringement and, potentially, willful infringement?