A document has been discovered by Repairify’s new attorney which led the company to request a reversal of the court’s decision in a lawsuit against Elitek regarding patent ownership.

The suit alleges that Keystone, an LKQ subsidiary doing business as Elitek, infringes 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.

In 2022, Elitek moved to dismiss Repairify’s claims that it owned two of the patents, arguing that Repairify lacked standing and the documents produced didn’t establish its ownership. Repairify’s ownership claim on the third patent was dismissed in May after which Repairify asked the dismissal be reconsidered. In June, the court denied reconsideration and granted summary judgment.

On June 12, 2024, the parties reached an agreement in principle to settle the dispute and then spent the next six weeks trying to finalize a formal written agreement, according to background information provided in Repairify’s Sept. 19 motion. However, by July 26, the parties had reached an impasse on several key terms, leading Elitek to file a motion to enforce a settlement.

On Sept, 5, the enforcement motion was denied and the case was set for trial.

The newly discovered document is a bill of sale, dated July 28, 2015. It was brought to Repairify’s attention on June 6, 2024. Repairify says the document “unequivocally assigned all rights to the applications that issued as the ’500 and ’334 Patents to Repairify.”

“The absence of this critical document significantly altered this case, leading to an unjust outcome dismissing two entire patents from this lawsuit based on an alleged lack of ownership, when in fact the executed bill of sale proves that Repairify owns both patents,” Repairify’s Sept. 19 motion states.

The bill of sale states, “Effective as of the closing date, seller hereby sells, transfers, assigns, conveys and delivers to buyer all of seller’s right, title and interest in and to all of the purchased assets… free and clear of all liens.”

Repairify argues that the patents-in-suit protect its “highly valuable business” and are likely to be the subject of future litigation against other entities.

“In light of this newly uncovered evidence, Repairify moves for relief under Federal Rules of Civil Procedure 54(b), 59(e), and 60(b), and respectfully requests that the court reverse its prior rulings dismissing count II (relating to the ’500 patent) and count III (relating to the ’334 Patent). The failure to previously identify the executed bill of sale in response to defendant’s motions was an unintentional mistake that occurred despite diligent efforts by prior counsel to manage the case and resulted in a manifest error of fact.”

Repairify noted in its motion that because the court separately granted summary judgment that the ’500 patent isn’t infringed, the relief it’s requested would only revive its three infringement claims regarding the ’334 patent.

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