DCT
2:20-cv-00278
MacNeil Automotive Products Ltd v. Yita LLC
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: MacNeil Automotive Products, Limited, WeatherTech Direct, LLC, and MacNeil IP LLC (collectively "MacNeil") (Illinois)
- Defendant: Yita, LLC (d/b/a Oedro and/or YitaMotor) (Washington)
- Plaintiff’s Counsel: Christensen O'Connor Johnson Kindness PLLC; Daspin & Aument, LLP
- Case Identification: 2:20-cv-00278, W.D. Wash., 06/06/2023
- Venue Allegations: Venue is based on Defendant being a Washington limited liability company with its principal place of business in Kent, Washington, within the judicial district, and allegations that it distributes infringing products in the district.
- Core Dispute: Plaintiff alleges that Defendant’s vehicle floor trays infringe four patents related to the design, manufacturing process, and precision fit of custom vehicle floor trays, in addition to asserting claims of trade dress infringement and unfair competition.
- Technical Context: The technology involves digitally scanning vehicle interiors to create custom-molded, three-dimensional floor trays that provide a precise fit and superior protection compared to conventional flat floor mats.
- Key Procedural History: This Third Amended Complaint follows a history of alleged awareness of MacNeil's intellectual property by the accused products' manufacturer, Jinrong, since at least 2015. The complaint details Jinrong’s alleged attendance at industry trade shows, consultation with law firms regarding MacNeil's patents, and citation to a related MacNeil patent in a Chinese patent application, which may be significant for the claims of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2004-10-29 | Priority Date for ’186, ’834, ’655, and ’917 Patents |
| 2013-02-26 | U.S. Patent No. 8,382,186 Issues |
| 2014-09-16 | U.S. Patent No. 8,833,834 Issues |
| 2014-12-02 | U.S. Patent No. 8,899,655 Issues |
| 2015-01-01 | Alleged start of manufacturer studying U.S. market (on or about) |
| 2015-09-22 | U.S. Patent No. 9,138,917 Issues |
| 2016-06-23 | Manufacturer Jinrong files related Chinese utility model patent |
| 2016-09-01 | Manufacturer Jinrong allegedly first introduces products to U.S. market (Fall 2016) |
| 2018-11-12 | Yita allegedly becomes exclusive U.S. distributor for manufacturer |
| 2023-06-06 | Third Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,382,186 - Vehicle Floor Tray
The Invention Explained
- Problem Addressed: The patent’s background section describes the shortcomings of conventional vehicle floor mats, which tend to shift, deform, bunch up, and fail to adequately contain liquids like melted snow or mud, potentially interfering with pedal operation and failing to protect the vehicle’s carpeting (’186 Patent, col. 1:15-34).
- The Patented Solution: The invention is a three-dimensional vehicle floor tray thermoformed from a polymer sheet of substantially uniform thickness. It features upstanding side panels that conform to the contours of a vehicle's footwell to prevent shifting, and a central reservoir containing a pattern of hollow baffles or treads. These baffles elevate the occupant's feet above collected liquid and impede the liquid from sloshing around due to vehicle movement (’186 Patent, Abstract; col. 5:8-24; Fig. 1).
- Technical Importance: This approach provided a custom-fit, rigid, three-dimensional liner that offered significantly better containment and stability than traditional flexible, two-dimensional mats (Compl. ¶7).
Key Claims at a Glance
- The complaint asserts at least Claim 1 (Compl. ¶103).
- Essential elements of independent Claim 1 include:
- A vehicle floor tray thermoformed from a sheet of thermoplastic polymeric material of substantially uniform thickness
- A central panel conforming to a vehicle footwell floor
- A first upwardly extending panel conforming to a first footwell wall
- A second upwardly extending panel conforming to a second footwell wall
- A reservoir disposed in the central panel
- A plurality of upstanding, hollow, elongate baffles in the reservoir
- The baffles have a width more than twice their thickness and are adapted to elevate an occupant's foot and impede fluid movement
U.S. Patent No. 8,833,834 - Molded Vehicle Floor Tray and System
The Invention Explained
- Problem Addressed: The patent addresses the same general problem of ill-fitting and ineffective conventional floor mats, but focuses on the technical challenge of achieving a highly precise, "no-slop" fit within the complex three-dimensional surfaces of a modern vehicle footwell (’834 Patent, col. 1:50-61).
- The Patented Solution: The patent claims a system comprising both the vehicle footwell and the molded floor tray. The core of the claimed solution is the tray’s extremely close conformance to the footwell walls, specifying that for a large portion of the tray’s upstanding walls, the outer surface is within one-eighth of an inch of the corresponding footwell wall surface. This precision is achieved by the manufacturing process which translates digital scans of the footwell into a mold (’834 Patent, col. 4:21-37; col. 17:46-54).
- Technical Importance: This high-precision fit prevents the tray from shifting, provides a "factory-installed" aesthetic, and ensures complete protection of the underlying surfaces (Compl. ¶¶ 8, 12-13).
Key Claims at a Glance
- The complaint asserts Claims 1, 5, and 9 (Compl. ¶116).
- Essential elements of independent Claim 1 include:
- A system including a vehicle and a floor tray
- The vehicle footwell has a floor and at least first, second, and third upstanding walls
- The vehicle floor tray is molded from a sheet of substantially uniform thickness and has a central panel and corresponding first, second, and third upstanding tray walls
- A close-conformance limitation: at least 90 percent of the top one-third of the outer surfaces of the tray walls are within one-eighth of an inch of the respective footwell walls
U.S. Patent No. 8,899,655 - Manufacturing Vehicle Floor Trays
- Technology Synopsis: This patent claims the process for manufacturing vehicle floor trays. The claimed method involves digitally measuring the three-dimensional positions of points on a vehicle footwell surface, using those stored points to create an electronic model of the footwell, using that model to construct an electronic image of the floor tray, and using the resulting data file to create a mold for manufacturing the final product (’655 Patent, Abstract).
- Asserted Claims: At least Claim 1 (Compl. ¶116).
- Accused Features: The complaint alleges that the accused floor trays sold by Defendant in the United States are made in China by the process claimed in the ’655 Patent (Compl. ¶54).
U.S. Patent No. 9,138,917 - Designing and Manufacturing Vehicle Floor Trays
- Technology Synopsis: This patent is also directed to the process of designing and manufacturing the floor trays. The claimed steps are substantially similar to those in the ’655 Patent, covering the digital acquisition of footwell geometry, the creation of an electronic model and data file, the fabrication of a mold from that file, and the molding of the final tray product (’917 Patent, Abstract).
- Asserted Claims: At least Claim 1 (Compl. ¶121).
- Accused Features: The complaint alleges that the accused floor trays are made by a process that includes the steps claimed in the ’917 Patent (Compl. ¶121).
III. The Accused Instrumentality
Product Identification
- Vehicle floor trays marketed and sold under the trademarks "Oedro" and/or "YitaMotor" (Compl. ¶19).
Functionality and Market Context
- The accused products are described as custom-fit vehicle floor trays designed for particular vehicle makes, models, and years (Compl. ¶¶ 6-7, 105). The complaint alleges that the manufacturer of these trays, Jinrong, utilizes laser scanning of vehicle footwells to design molds used to produce the trays, a process mirroring that of MacNeil (Compl. ¶¶ 21-23). The complaint alleges that for each accused product sold, there is a directly competing MacNeil FLOORLINER product, framing the products as direct market substitutes (Compl. ¶105).
- No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
U.S. Patent No. 8,382,186 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A vehicle floor tray thermoformed from a sheet of thermoplastic polymeric material of substantially uniform thickness | The accused products are alleged to be "molded vehicle floor trays." | ¶23 | col. 5:12-17 |
| a central panel substantially conforming to a floor of a vehicle foot well... | The accused products are alleged to be custom-designed to fit the footwell of a particular vehicle. | ¶¶ 6, 22 | col. 5:27-28 |
| a first panel integrally formed with the central panel... upwardly extending from the transversely disposed lateral side... and closely conforming to a first foot well wall... | The accused products are described as "trays" designed to fit a three-dimensional footwell, which suggests the presence of upstanding side panels. | ¶¶ 12, 22 | col. 7:31-35 |
| a second panel integrally formed with the central panel and the first panel, upwardly extending from the longitudinally disposed lateral side... and closely conforming to a second foot well wall... | The accused products are described as "trays" designed to fit a three-dimensional footwell, which suggests the presence of upstanding side panels. | ¶¶ 12, 22 | col. 7:31-35 |
| a reservoir disposed in the central panel of the floor tray; | The complaint does not provide sufficient detail for analysis of this element. | N/A | col. 5:8-9 |
| a plurality of upstanding, hollow, elongate baffles disposed in the reservoir... the baffles each having a width... of more than two times its thickness, the baffles adapted to elevate the shoe... and further adapted to impede lateral movement... of fluid collected... | The complaint does not provide sufficient detail for analysis of this element. | N/A | col. 5:9-24 |
- Identified Points of Contention:
- Structural Questions: A primary point of contention may be whether the accused products incorporate the claimed "reservoir" and "baffles." The complaint makes broad allegations of infringement of the ’186 Patent but provides no specific facts alleging the presence of these claimed structural features, which are central to managing collected liquid as described in the patent.
- Functional Questions: Should evidence of a reservoir and baffles be presented, a subsequent question will be whether those features function as claimed, specifically whether the baffles have the claimed width-to-thickness ratio and are adapted to both elevate an occupant's foot and impede fluid sloshing.
U.S. Patent No. 8,833,834 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A system including a vehicle and a floor tray... a vehicle foot well having a floor, a substantially longitudinally disposed first foot well wall... a substantially transversely disposed second foot well wall... a substantially longitudinally disposed third foot well wall... | The accused products are alleged to be specifically designed for particular vehicle makes and models, thereby creating the claimed system when installed. | ¶¶ 6, 111 | col. 17:54-61 |
| a vehicle floor tray molded from a sheet of polymeric material of substantially uniform thickness, a central panel... a substantially longitudinally disposed first tray wall... a substantially transversely disposed second tray wall... a substantially longitudinally disposed third tray wall... | The accused products are alleged to be molded floor trays with a shape translated from digital scans of a vehicle footwell, suggesting they have the requisite panel structure to conform to the footwell walls. | ¶¶ 22-23 | col. 18:5-9 |
| at least 90 percent of that one-third of the outer surfaces of the first, second and third tray walls which are closest to the respective top margins of the first, second or third tray walls being within one-eighth of an inch of the respective foot well walls. | The complaint alleges that the manufacturer of the accused products uses laser scanning of vehicle footwells to design its molds, a process intended to achieve the "precise fit" that is the basis of this claim limitation. | ¶¶ 13, 21-22 | col. 4:29-37 |
- Identified Points of Contention:
- Evidentiary Questions: The central dispute for this patent will likely be evidentiary. The claim requires a specific, quantitative degree of dimensional conformance ("within one-eighth of an inch"). The key question will be what evidence, such as 3D scan data or physical measurements of the accused products installed in vehicles, the Plaintiff can produce to demonstrate that this precise tolerance is met.
V. Key Claim Terms for Construction
- The Term: "baffles" (’186 Patent, Claim 1)
- Context and Importance: This term is critical to the ’186 Patent as it defines the fluid-control structures within the reservoir. The definition will determine whether any surface features on the accused products meet this limitation. Practitioners may focus on this term because if the accused products have surface channels or ribs that do not meet the definition of "baffles," infringement may be avoided.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim describes the baffles functionally, as being "adapted to elevate the shoe... and further adapted to impede lateral movement... of fluid" (’186 Patent, col. 20:20-25). This functional language may support a construction that covers any upstanding structure performing these roles.
- Evidence for a Narrower Interpretation: The detailed description and figures show a specific arrangement where "most of the tread surfaces/baffles 118 have both fore-to-aft or longitudinal portions 120 and side-to-side or transverse portions 122" (’186 Patent, col. 7:11-14; Fig. 1). This specific embodiment, showing an interconnected grid, may support a narrower construction limited to structures with both longitudinal and transverse components.
- The Term: "closely conforming" (’186 Patent, Claim 1) / "substantially conforming" (’834 Patent, Claim 1)
- Context and Importance: These terms are central to the fit of the tray, which is a key aspect of the inventions. While the ’834 Patent adds a specific numerical tolerance, the general meaning of conformance is fundamental. The dispute will turn on how much deviation from the footwell contour is permissible for a tray to be "conforming."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The background section contrasts the invention with prior art mats that only "approximately conform" (’186 Patent, col. 2:40-42), suggesting that "closely conforming" implies a better-than-approximate fit without requiring perfect contact at all points.
- Evidence for a Narrower Interpretation: The specification repeatedly emphasizes a "snug fit" achieved by digitally measuring the footwell and creating a tray where "the distance between the outer surface of the tray and the surface of the foot well is no more than about one eighth of an inch" (’186 Patent, col. 17:58-62). This language, particularly in the patent family context of the ’834 Patent's explicit tolerance, could support a narrow construction requiring a very tight, measurable fit.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of infringement for all four patents, based on Defendant's acts of importing, offering to sell, and selling the accused products (Compl. ¶¶ 104, 112, 117, 122). It also alleges contributory infringement of the ’834 Patent, stating the products were "especially made or specially adapted for use in the claimed invention" (Compl. ¶110).
- Willful Infringement: The complaint alleges willful infringement for all four asserted patents (Compl. ¶¶ 107, 114, 119, 124). The basis for this allegation is extensive, detailing alleged pre-suit knowledge by the products' manufacturer, Jinrong. Allegations include that Jinrong studied the U.S. market and MacNeil's products since at least 2015, attended industry trade shows, was advised by law firms regarding MacNeil's patents, and cited a related MacNeil patent in its own Chinese patent application (Compl. ¶¶ 35-39, 45, 48).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue for the process patents (’655 and ’917) will be one of evidentiary proof: Can MacNeil obtain sufficient discovery from the foreign manufacturer, Jinrong, to prove that the specific steps of digital measurement, electronic modeling, and mold creation claimed in the patents were actually performed to make the imported products?
- A key question for the product patent (’186) will be one of structural correspondence: Do the accused "Oedro" and "YitaMotor" floor trays contain the specific "reservoir" and "baffle" structures required by the claims, a factual question for which the complaint does not currently provide detailed allegations?
- The case may ultimately turn on a question of dimensional infringement for the system patent (’834): Can MacNeil demonstrate through technical evidence, such as 3D scanning, that the accused trays meet the precise numerical tolerance of being "within one-eighth of an inch" of the vehicle footwell walls for the substantial portion required by the claim?