DCT
2:18-cv-00844
Definitive Holdings v. Powerteq
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Definitive Holdings, LLC (Utah)
- Defendant: Powerteq LLC (Kentucky)
- Plaintiff’s Counsel: WASATCH-IP, A PROFESSIONAL CORP.
- Case Identification: 2:18-cv-00844, D. Utah, 11/16/2018
- Venue Allegations: Plaintiff alleges venue is proper because Defendant Powerteq has a regular and established place of business in the District of Utah.
- Core Dispute: Plaintiff alleges that Defendant’s vehicle engine tuning systems infringe a patent related to efficiently upgrading engine controller software by storing and applying only the differences between stock and upgraded versions.
- Technical Context: The technology operates in the aftermarket automotive performance sector, where handheld electronic devices are used to reprogram a vehicle's Engine Control Unit (ECU) to modify performance characteristics.
- Key Procedural History: The complaint alleges that Defendant had pre-suit knowledge of the patent-in-suit via a written notice of infringement sent on or about January 18, 2018.
Case Timeline
| Date | Event |
|---|---|
| 2001-03-30 | '689 Patent Priority Date (Provisional Filing) |
| 2013-06-04 | '689 Patent Issue Date |
| 2018-01-18 | Alleged Pre-Suit Notice of Infringement Sent |
| 2018-11-16 | First Amended Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,458,689 - "Method and Apparatus for Reprogramming Engine Controllers"
- Patent Identification: U.S. Patent No. 8,458,689, "Method and Apparatus for Reprogramming Engine Controllers," issued June 4, 2013.
The Invention Explained
- Problem Addressed: The patent identifies the challenge of upgrading engine control software when numerous different software versions exist, even for the same vehicle model and year ('689 Patent, col. 1:57-61). Storing a complete copy of every possible stock software version in a handheld tuning device would require substantial memory, increasing the device's cost (Compl. ¶13; ’689 Patent, col. 5:18-26).
- The Patented Solution: The invention proposes a memory-efficient method and apparatus that does not store entire software files. Instead, the device reads and saves an "image" of the vehicle's current software and then creates a modified version by replacing only specific "data blocks" of that image with upgraded data blocks. This "patching" approach allows the device to store only the differences between the stock and upgraded software, minimizing storage requirements (’689 Patent, col. 5:27-30). The original software image is retained for restoration purposes (’689 Patent, col. 2:47-49).
- Technical Importance: This method enables a single, low-cost device to support a wide array of vehicle software versions without needing the extensive memory that would be required to store full copies of each potential stock software file (’689 Patent, col. 5:18-30).
Key Claims at a Glance
- The complaint asserts independent apparatus Claim 27 and independent method Claim 1.
- Independent Claim 27 (Apparatus) recites an apparatus comprising:
- An interface to communicate with an engine controller.
- A memory storing information for a plurality of software versions and associated upgraded data blocks.
- A processor configured to:
- Determine the current software version in the engine controller.
- Identify the appropriate upgraded data blocks for that version.
- Replace data blocks in the current software with the upgraded data blocks, where this replacement process involves first "obtaining an image of the current software from the engine controller and storing that image in the memory."
- The processor is also configured to monitor the process and resume from an interruption.
- The complaint reserves the right to assert additional claims (Compl. ¶37).
III. The Accused Instrumentality
Product Identification
- The complaint identifies a line of "gasoline and diesel tuning systems" sold under the DiabloSport, Superchips, and Edge brands, collectively referred to as the "Accused Products" (Compl. ¶5). The DiabloSport Predator 2 device is used as a representative example for the infringement allegations (Compl. ¶24).
Functionality and Market Context
- The Accused Products are described as handheld devices that plug into a vehicle's On-Board Diagnostic (OBD-II) port (Compl. ¶26). They are used by consumers to alter engine performance by reprogramming the vehicle's ECU. The complaint alleges the devices function by determining the vehicle's current software version to ensure the correct "calibration files" are used (Compl. ¶29). The process involves saving the vehicle's original "stock files" before installing a new "tune file" (Compl. ¶27). The user manual for the Predator 2, attached as an exhibit, illustrates this process, including an option to return the vehicle to its "stock" configuration (Compl. ¶31, p. 12).
IV. Analysis of Infringement Allegations
'689 Patent Infringement Allegations
| Claim Element (from Independent Claim 27) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An apparatus for upgrading software in an engine controller... | The Accused Devices, including the DiabloSport Predator 2, are apparatus for upgrading software in an engine controller. | ¶25 | col. 9:38-40 |
| an interface configured to communicate data to and from the engine controller; | The devices include an interface, such as an OBD-II connector, to communicate with the engine controller. A visual from the user manual shows the device plugged into the vehicle's OBD-II port (Predator 2 User Manual, p. 10). | ¶26 | col. 9:56-59 |
| a memory, which stores information identifying a plurality of software versions and one or more data blocks of upgraded software associated with each... | The device memory stores "stock files" and "tune" files, which are alleged to be the upgraded software data blocks. A screenshot shows prompts to save stock files and install a "Tune" file (Predator 2 User Manual, p. 11). | ¶27 | col. 5:40-45 |
| a processor... configured to: determine a version of current software in the engine controller... | The processor determines the software version to ensure it has the necessary "calibration files." A user manual screenshot shows a "vehicle calibration not on file" status message (Predator 2 User Manual, p. 32). | ¶29 | col. 15:44-46 |
| replace one or more data blocks of the current software... by: obtaining an image of the current software from the engine controller and storing that image in the memory; | The processor obtains and stores an image of the current software, evidenced by user manual instructions to "save your stock files." A screenshot shows a "Stock Files are Saved Successfully!" message (Predator 2 User Manual, p. 11). | ¶30, ¶31 | col. 15:57-60 |
| while retaining the obtained image... forming a data stream... obtained by modifying the image... by replacing one or more data blocks of the image... | Plaintiff alleges on information and belief that the device creates a modified data stream by replacing data blocks of the stored image with upgraded software. | ¶32 | col. 16:1-9 |
| monitor status information... and, if an interruption occurs, use the status information to resume replacing... | The device includes a "Recovery Mode" that automatically restores the factory stock settings if the programming process is interrupted. A user manual excerpt describes this feature (Predator 2 User Manual, p. 31). | ¶33 | col. 16:12-17 |
Identified Points of Contention
- Scope Questions: The complaint alleges the accused device performs a "patching" operation by "replacing one or more data blocks of the image." A central question may be whether the accused product's "tune files" are functionally equivalent to the claimed "data blocks constituting less than all of the modified version," or if they are complete, self-contained software files that entirely overwrite the stock software.
- Technical Questions: What is the exact technical process executed by the Accused Products when a "tune" is installed? The complaint provides user manual evidence for saving a stock file and installing a tune file, but it alleges on "information and belief" that this corresponds to the claimed method of modifying a stored image by replacing data blocks. The case may require evidence, such as from reverse engineering, to determine if the device performs the specific "read-modify-write" sequence described in the claim or a simpler "delete-and-replace" operation.
V. Key Claim Terms for Construction
The Term: "data blocks"
- Context and Importance: This term is fundamental to the patent's core concept of memory-efficient "patching." The infringement analysis depends on whether the accused "tune files" or "calibration files" are considered "data blocks" that constitute "less than all of the modified version of current software." The defense may argue that a "tune file" is a complete software build, not a "data block."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not provide a narrow definition for "data blocks," using the term to refer generally to portions of software ('689 Patent, col. 2:17-19). This may support an argument that any discrete set of software information, such as a calibration file, could qualify.
- Evidence for a Narrower Interpretation: The specification's repeated emphasis on memory conservation by storing only "differences between stock engine control software and upgraded engine control software" suggests that "data blocks" refer specifically to these differences, or patches, rather than entire files ('689 Patent, col. 5:27-30).
The Term: "creating a modified version of the current software... by replacing one or more data blocks of the image"
- Context and Importance: This phrase describes the specific mechanism of infringement. Its construction will be critical. Practitioners may focus on this term because it raises the question of whether the claim requires the tuning device to actively modify its stored copy of the stock software, or if it can also read on a process where a separate, pre-packaged "tune file" is selected and used to overwrite the ECU's software.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The language could be argued to describe the end result—a modified version in the ECU—where the modification was sourced from data blocks stored in the tuner, without strictly dictating the intermediate steps within the tuner's processor.
- Evidence for a Narrower Interpretation: A literal reading of the claim suggests a specific sequence: obtain image, store image, modify that stored image by replacing blocks, then download the newly created modified image ('689 Patent, col. 15:51-61). Evidence from the user manual showing "Install the Diablo Tune File?" (Compl. p. 9) could support an argument for a simpler process of overwriting with a separate file, which may not meet this narrower construction.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement of method Claim 1, stating that Defendant instructs its customers to perform the patented method by providing user manuals, such as the Predator 2 User Manual, with its products (Compl. ¶36, ¶54). The complaint also alleges contributory infringement, stating the Accused Products are a material part of the invention, are not staple articles of commerce, and have no substantial non-infringing use (Compl. ¶58, ¶61).
- Willful Infringement: Willfulness is alleged based on Defendant’s purported continued infringement after receiving written notice of the '689 patent on or about January 18, 2018 (Compl. ¶52, ¶55).
VII. Analyst’s Conclusion: Key Questions for the Case
- A key evidentiary question will be one of technical implementation: Do the accused "tune files" function as "data blocks" that patch a stored image of the vehicle's stock software, as claimed in the patent? Or are they complete, standalone software files that fully overwrite the stock software, a process that may not align with the claim language? The complaint's evidence from the user manual is ambiguous on this operational detail.
- The case will likely turn on claim construction, specifically the meaning of "replacing one or more data blocks of the image." The court's interpretation will determine whether the patent covers only a specific "read-modify-write" process within the tuner itself or can be read more broadly to encompass a system where a pre-compiled update file is selected and used to perform a full overwrite of the ECU's existing software.