Keystone Automotive — an LKQ subsidiary doing business as Elitek — has asked for a patent infringement lawsuit filed against it by Repairify to be ruled against without a full trial.

The suit alleges that Elitek and parent company Keystone infringe on three of Repairify’s remote servicing and programming system and method patents on vehicles through an OBD or OBD-II interface. It was filed Aug. 9, 2021 in the U.S. District Court for the Western District of Texas.

The latest motion was filed following a May 28 pre-trial conference during which the suit was partly dismissed. Repairify has asked the dismissal be reconsidered.

Elitek contends that summary judgment should be granted because one of the patents in question is unenforceable under a terminal disclaimer. The disclaimer granted Repairify ownership of U.S. Patent No. 10,528,334 (the “‘334 patent”) only when U.S. Patent No. 9,684,500 (the “‘500 patent”) is still owned, according to the motion.

“The terminal disclaimer reads: ‘The owner hereby agrees that any patent so granted on the instant application [the ’334 Patent] shall be enforceable only for and during such period that it and the prior patent [the ’500 Patent] are commonly owned,'” the motion states. “Terminal disclaimers render a patent unenforceable when the disclaimed patent is not commonly owned with the prior patent… a terminal disclaimer is a binding promise not to enforce the patent under specific circumstances.”

Due to Repairify not meeting its burden to show it had ownership of the ‘500 patent when the complaint was filed, the court dismissed that infringement claim. Elitek’s motion to dismiss the ‘334 patent infringement claim was denied and still requires a court ruling.

Elitek argues that the infringement claims made against it are invalid “because they are directed at an abstract idea without any inventive concept, as anticipated and/or are obvious in light of the prior art under 35 U.S.C. §§ 102 and 103, and for lacking written description support and enablement under 35 U.S.C. § 112.”

Repairify seeks monetary damages in the form of a reasonable royalty, pre- and post-judgment interest, costs, enhanced damages, and an award of its fees.

Images

Featured image: LKQ subsidary Elitek’s EVS OBD-II plug-in is shown. The device allows Elitek to conduct remote diagnostics on a vehicle within a body shop. (Provided by Elitek)

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