DCT
1:16-cv-00784
Mike Murphy's Enterprises Inc v. Fineline Industries LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Mike Murphy's Enterprises, Inc. (California)
- Defendant: Fineline Industries, LLC (Florida)
- Plaintiff’s Counsel: Heimlich Law, PC
- Case Identification: 1:16-cv-00784, E.D. Cal., 09/01/2016
- Venue Allegations: Venue is alleged to be proper based on Defendant being a limited liability company registered to conduct business in California, operating and manufacturing within the judicial district, and placing infringing products into the stream of commerce in the state.
- Core Dispute: Plaintiff alleges that Defendant’s "Supreme" and "Centurion" brand recreational boats, which incorporate water ballast systems, infringe a patent related to methods for controlling a boat's wake.
- Technical Context: The technology involves integrated ballast systems in powerboats, which are filled with water to increase the boat's displacement and thereby create larger, more desirable wakes for watersports like wakeboarding and wakesurfing.
- Key Procedural History: The complaint alleges that a "former version" of the Defendant company, operating at the same facility, previously licensed the patent-in-suit. Plaintiff alleges that license was terminated due to material breaches and that Defendant was aware of the patent yet continued infringing conduct, forming the basis for a willfulness allegation.
Case Timeline
| Date | Event |
|---|---|
| 1999-12-07 | '099 Patent Priority Date (Application Filing Date) |
| 2001-05-22 | '099 Patent Issue Date |
| 2008-02-28 | '099 Patent assigned from inventor Jessen to inventor Murphy |
| 2008-05-06 | '099 Patent assigned from Murphy to Plaintiff MMEI |
| 2015-06-16 | Formation of Defendant's California entity cited by Plaintiff |
| 2016-09-01 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,234,099 - "Methods and Means to Control Boat Wake," issued May 22, 2001
The Invention Explained
- Problem Addressed: The patent’s background section describes prior art methods for enhancing a boat’s wake, such as using "weights such as concrete blocks," as "cumbersome and difficult to install and remove," with a risk of damaging the boat if mishandled (’099 Patent, col. 1:6-15). Other portable container systems are also noted as having disadvantages ( Compl. ¶ 41).
- The Patented Solution: The invention is an integrated system for controlling a boat’s wake using water as ballast. It comprises at least one watertight compartment built into the boat's hull, positioned below the waterline, and extending from the stern to a point forward of the engine (’099 Patent, Abstract). The compartment has a sealable opening at the stern that allows it to be flooded with water to add weight and then drained by opening it while the boat is in forward motion on a plane, which lifts the opening above the waterline (’099 Patent, Abstract; col. 2:22-24). The system is designed to be remotely controlled by boat occupants (’099 Patent, col. 2:32-36).
- Technical Importance: The invention provided an integrated, efficient, and user-controllable method for adjusting boat wake, eliminating the need for cumbersome, potentially damaging, and manually handled external weights (’099 Patent, col. 2:55-61).
Key Claims at a Glance
- The complaint asserts independent claim 1 and reserves the right to assert other claims (Compl. ¶ 33).
- Independent Claim 1 recites:
- A water craft with an inboard engine of sufficient thrust to create an enlarged wake.
- At least one watertight compartment positioned below the waterline.
- The compartment has a sealable opening at the stern, below the waterline.
- The compartment is adapted to contain liquid water to enhance or equalize the wake.
- The opening is adapted to be opened to drain water while the craft is in forward motion on a plane.
- The inboard engine is located forwardly of the stern.
- The compartment extends from in proximity to the stern to a point forward of the engine.
III. The Accused Instrumentality
Product Identification
- The accused products are recreational boats manufactured by Defendant under the "Supreme" and "Centurion" brand names, including specific models such as the Supreme S238 and Centurion Ri237 (Compl. ¶¶ 6, 24, 40).
Functionality and Market Context
- The accused boats are equipped with water ballast systems, marketed as "QuickFill Ballast" in Supreme models and "RAMFILL Ballast" in Centurion models (Compl. ¶¶ 24, 40). These systems are alleged to feature watertight tanks located below the boat's floor that can be filled with water to increase the boat's weight, thereby enhancing the size of the wake for watersports (Compl. ¶¶ 30-31). The complaint alleges these systems include sealable ports on the transom connected to the tanks, allowing for filling and draining (Compl. ¶¶ 27-28). The complaint provides an image showing the accused Supreme boat creating a large surf wake (Compl. p. 23).
IV. Analysis of Infringement Allegations
'099 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A water craft including an inboard engine of sufficient thrust to create an enlarged wake at the stern of the boat as the boat moves along the surface of a body of water, | Defendant manufactures and sells "Supreme" and "Centurion" boats with inboard engines that create large wakes for watersports. An image depicts a Supreme S226 with its engine cover removed, showing the inboard engine. (Compl. p. 22). | ¶¶ 21, 23 | col. 4:10-13 |
| and at least one water tight compartment positioned below the water line having a sealable opening at the stern of the boat below the water line, | The accused boats contain "QuickFill" or "Ramfill" ballast systems, which are alleged to be watertight compartments. The complaint includes an image of the stern of a Supreme boat showing two port openings, alleged to be the "sealable opening at the stern of the boat below the water line." (Compl. p. 27). | ¶¶ 24-25, 27 | col. 4:14-17 |
| said compartment being adapted to contain liquid water in an amount sufficient to enhance or equalize the size of the boat wake, | The ballast compartments are filled with water to weigh down the boat, which enhances or equalizes the wake. The complaint alleges that the presence of two separate compartments allows for balancing the boat to "equalize[] the size of the boat wake." (Compl. p. 31). | ¶¶ 30-31 | col. 4:17-19 |
| the said opening on said compartment being adapted to be opened to drain out the water at the rear of the water craft while the water craft is in forward motion on a plane, | The complaint alleges the system is operated to drain water while the boat is on a plane. An image is provided that allegedly shows water draining from a port on a Centurion boat while it is in forward motion. (Compl. p. 50). | ¶¶ 32, 48-50 | col. 4:19-22 |
| said inboard engine being located forwardly of the stern and said compartment extending at its rear end from in proximity to the stern of the water craft and terminating at its front end a point forward of the engine. | The engine is located forward of the stern. The complaint alleges the ballast tanks, which are located below the floor, extend from the stern area to a point forward of the engine. An internal photograph shows a tube and gate valve assembly connecting the transom port to what is alleged to be the watertight compartment. (Compl. p. 29). A top-down diagram is used to allege the compartment extends forward of the engine based on volume calculations. (Compl. p. 35). | ¶¶ 33-35 | col. 4:22-26 |
Identified Points of Contention
- Scope Questions: A central question may be whether the accused system, which uses a port on the transom connected by a tube to a separate gate valve and then to a tank, meets the claim limitation "sealable opening at the stern of the boat." The patent figures depict a valve integrated directly with the transom (’099 Patent, FIG. 1, 3), which may support a narrower construction than what the Plaintiff alleges. The complaint anticipates this dispute by pleading infringement under the doctrine of equivalents as an alternative (Compl. ¶ 34).
- Technical Questions: The complaint alleges, "on information and belief," that the ballast tanks terminate "well forward of the engine" based on calculations of their water capacity (Compl. p. 35). A key factual question for discovery will be to determine the precise physical location and dimensions of the accused ballast tanks relative to the engine to verify if this limitation is met.
V. Key Claim Terms for Construction
The Term: "sealable opening at the stern of the boat"
Context and Importance: This term's construction is critical because the accused products employ a system of ports on the transom connected via internal tubing to gate valves and ballast tanks, rather than a single integrated opening and valve directly on the transom as depicted in the patent's figures. The outcome of this construction could determine literal infringement.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself does not specify that the sealing mechanism (e.g., a valve) must be integral with the transom. A party could argue that an "opening at the stern" that is made "sealable" by a connected valve meets the plain language of the claim.
- Evidence for a Narrower Interpretation: The specification describes "sealable large openings through and on each side of the rear transom" (’099 Patent, col. 2:25-28) and Figure 3 depicts the device (40) located directly on the transom (22). This could support an interpretation requiring the sealing component to be located directly at the transom wall.
The Term: "compartment extending at its rear end from in proximity to the stern"
Context and Importance: Practitioners may focus on this term because the accused boats' ballast tanks are not directly adjacent to the stern transom but are connected to it by tubes (Compl. p. 29). The definition of "in proximity" will be important for determining whether this physical separation falls within the claim's scope.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue that "in proximity" does not require direct contact and that a compartment functionally connected to the stern via a short tube is sufficiently close to meet the definition. The patent does not explicitly define a maximum distance for "proximity."
- Evidence for a Narrower Interpretation: The drawings, such as Figure 2, show the compartments (26, 28) extending contiguously to the stern. A party could argue that the term, in light of the figures, requires the compartment's physical wall to be near or touching the stern structure, not merely connected to it by plumbing.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement under 35 U.S.C. § 271(b) (Compl. ¶¶ 53-55). The factual basis for this claim is that Defendant sells the accused boats to its dealers with knowledge of the patent and with the specific intent that the dealers and end-users will operate the infringing ballast systems. The complaint provides lists of dealers as evidence of the distribution channel (Compl. pp. 57-58).
- Willful Infringement: The complaint alleges that Defendant's infringement is willful (Compl. ¶ 41, 47). The basis for this allegation is Defendant's alleged pre-suit knowledge of the ’099 Patent, stemming from a prior license agreement between Plaintiff and a "former version of the company" that allegedly shared management and facilities with the current Defendant. The complaint alleges that Defendant continued its conduct even after the license was terminated (Compl. ¶ 41).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the claim term "sealable opening at the stern of the boat," which the patent figures depict as a valve integrated with the transom, be construed to read on the accused system's transom port, which is connected by an internal tube to a separate gate valve?
- A key evidentiary question will be one of physical configuration: does the accused boats' ballast tank system, which is located below the floor, actually terminate "at its front end a point forward of the engine" as required by claim 1? This will likely require expert analysis of the boats' design and construction.
- A central question for damages will be willfulness: given the allegation of a prior terminated license agreement with a predecessor entity, did the Defendant act with "objective recklessness" by continuing to manufacture and sell boats with the accused technology, potentially exposing it to enhanced damages?