Monday, 24 November 2014 00:00

Patent Infringement Case Includes Allegations of Gaining Information from Password-Protected Site

A district court case in Minnesota pertaining to patent infringement is at the center of a controversy between two parts supplier companies: Total Automotive and Dorman Products. This includes allegations that Dorman Products logged into Total Automotive’s password-protected website and then introduced competing products to the marketplace.

On April 11, Total Automotive filed a complaint against Dorman Products for manufacturing, using, selling, and/or offering to sell hinge bracket kits that infringe on the ‘654 Patent owned by Total Automotive. Six months later on Oct. 31, the Minnesota-based company amended the complaint highlighting the specific allegations against Dorman.

Total Automotive is an OEM automotive parts wholesale distributor that also manufactures door hinge repair kits for approximately 7,000 vehicle applications.  

Dorman Products, based in Colmar, Pennsylvania, supplies automotive replacement parts to the automotive aftermarket.

It is related to RB Distribution, Inc., a U.S.-based supplier of replacement parts and fasteners to the automotive aftermarket. RB Distribution shares Dorman Products’ office in Colmar.

According to court documents, Total Automotive claims that on repeated occasions, "one or more persons using computers with IP addresses registered to RB Distribution have logged into Total Automotive's password-protected website using the login ID and password of Total Automotive customers."

These include Dempster Auto Corporation and Danken Auto Supply. In addition, Total Automotive said that RB Distribution's access to their website is a violation of the company's "click wrap" agreement, which is displayed on their login page. Click wrap agreements are agreements formed on the Internet where a website provider posts terms and conditions and the user clicks an "I Accept" button. The courts have generally held these agreements to be enforceable.

The company also claimed that the unlawful access to the password-protected site was "done with the knowledge and consent, and with the express intention, of providing information to Dorman regarding Total Automotive's product catalogs and non-public pricing."

Dorman denies the allegations and said it has not infringed on any claim of the ‘654 Patent. They stated in court documents that it “does not require authorization or a license to make, use, sell, or offer to sell its accused products as they are not within the scope of the ‘654 Patent.”

According to Total Automotive, the U.S. Patent and Trademark Office issued the company the '654 Parent entitled “Door Hinge Repair Apparatus and Method,” on December 10, 2013.

Derek Flom, the company’s Business Development Manager, said Total Automotive has patents on some of its products and a lot of its products are exclusive to the company.

“The main advantage of our products and our hinge kits is they’re all made in the USA and designed with the end user so they actually work,” said Flom. “They install quickly and reliably, and they function really well.”

Flom said the hinges are engineered so they can be installed on a vehicle without having to paint and the tedious labor of unbolting and aligning parts for the door.

“It’s really developed with the end user in mind.”

Company attorney Marc Al said the 22-year-old company has a variety of products, and is very well known for its high-quality door hinge kits.

Total Automotive claims that Dorman does not have permission to use the subject matter claimed in the ‘654 Patent and has unfairly reaped a substantial advantage in research, development, and operational time and cost, all to Total Automotive’s detriment. As a direct result, Total Automotive said it has been caused significant financial damage.

The lawsuit stated that Dorman withdrew its product from the market after it learned that it infringed on Total Automotive’s patent rights but then re-introduced its hinge bracket kits. As a result, Total Automotive is seeking damages to compensate the company for Dorman’s direct infringement of the patent.

“The relief requested is that Dorman immediately stop selling the infringing bracket kits and for money damages,” said Al. Dorman countered that Total Automotive is misusing the ‘654 Patent “by bringing the present action against Dorman, alleging patent infringement to coerce Dorman into entering a license agreement when Total Automotive knew or should have known that the ‘654 Patent is not infringed; invalid; and unenforceable.”

No court date has been set but Al said a scheduling conference will be held on January 6. Since this is a patent case, there will likely be a Markman hearing, which is a pretrial hearing in which a federal judge examines evidence on the relevant words used in a patent claim, and clarifies any disputes regarding the meaning of words in the patent. The case will ultimately resolve through motion practice, trial, a possible appeal or settlement.

Calls to Dorman Products and the company’s attorneys at Volpe and Koenig were not returned.

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