DCT

5:23-cv-06515

Johnson v. Lunkerhunt LP

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 5:23-cv-06515, N.D. Cal., 12/18/2023
  • Venue Allegations: Venue is alleged to be proper in the Northern District of California because eBay and Google reside there, have regular and established places of business, and have allegedly committed acts of infringement within the district. Venue over the Canadian defendants, Lunkerhunt and BGDM, is predicated on their alleged sales of accused products into the district.
  • Core Dispute: Plaintiff alleges that Defendants’ turtle-shaped fishing lures infringe a patent related to a simulated turtle fishing lure apparatus.
  • Technical Context: The technology concerns fishing lures designed to mimic the appearance and movement of small turtles, a known prey for various species of fish.
  • Key Procedural History: The complaint alleges that all defendants received actual notice of the patent-in-suit prior to the filing of the lawsuit. Plaintiff allegedly notified Lunkerhunt, BGDM, and Google via email on November 14, 2023, and notified eBay on November 25, 2023. Plaintiff also allegedly informed Amazon of the infringement on November 16, 2023.

Case Timeline

Date Event
2004-03-25 ’785 Patent Priority Date (Application Filing)
2005-08-23 ’785 Patent Issue Date
2023-11-14 Alleged actual notice sent to Lunkerhunt, BGDM, and Google
2023-11-16 Alleged notice sent to Amazon
2023-11-25 Alleged actual notice sent to eBay
2023-12-18 Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 6,931,785 - Simulated Turtle Fishing Lure Apparatus

The Invention Explained

  • Problem Addressed: The patent’s background section notes that while fishing lures resembling various water-borne creatures were known, a lure that simulates a turtle was not available in the prior art, despite turtles being attractive prey for fish (’785 Patent, col. 1:11-16).
  • The Patented Solution: The invention is a fishing lure apparatus designed to look and move like a turtle. It comprises a body with a top "shell" portion and a bottom portion, along with a simulated head, legs, and tail (’785 Patent, Abstract). The apparatus is designed to accommodate one or more fish hooks, which can be connected to the body, legs, or tail, allowing for interchangeable attachments to modify the lure's features (’785 Patent, col. 2:26-32).
  • Technical Importance: The invention provides a means to exploit a previously untapped prey image in fishing, proposing that the unique appearance and potential for "wavy movement" of a turtle lure could be highly effective in attracting fish (’785 Patent, col. 1:37-43).

Key Claims at a Glance

  • The complaint asserts independent claim 1 (’785 Patent, Compl. ¶30).
  • Claim 1 of the ’785 Patent recites the following essential elements:
    • A fishing lure apparatus, comprising:
    • a simulated turtle body which includes a simulated turtle bottom portion and a simulated turtle shell portion supported by said simulated turtle bottom portion,
    • simulated turtle legs connected to said simulated turtle body,
    • a simulated turtle tail connected to said simulated turtle body,
    • a simulated turtle head connected to said simulated turtle body, and
    • one or more fish hooks connected to at least one of said simulated turtle body, said simulated turtle legs, and said simulated turtle tail,
    • wherein said simulated turtle tail includes: a tail hook of said one or more fish hooks, and
    • a simulated turtle tail covering attached to said tail hook.
  • The complaint does not explicitly reserve the right to assert other claims, but alleges infringement of "one or more of the claims" generally (Compl. ¶49).

III. The Accused Instrumentality

Product Identification

  • The complaint identifies the accused products as the Lunkerhunt “prop turtle” and the “Lunkerhunt prop series combo” (Compl. ¶¶39-40).

Functionality and Market Context

  • The accused products are described as turtle-imitating fishing lures sold by defendant Lunkerhunt through its own website and through third-party retailers, including defendants eBay and Google (Compl. ¶¶38-39, 43, 45). The complaint includes a screenshot of the Lunkerhunt product page for the "prop turtle" lure (Compl. ¶39; Exs. 10-11). Another screenshot shows the "Lunkerhunt prop series combo" advertised as a "best seller" on Lunkerhunt's Amazon store (Compl. ¶40; Ex. 13).
  • The complaint alleges that these products are sold, offered for sale, and used throughout the United States by the defendants (Compl. ¶38).

IV. Analysis of Infringement Allegations

The complaint references a claim chart in Exhibit 12, which was not publicly filed with the initial complaint (Compl. ¶2, p. 9). In the absence of this exhibit, the infringement theory is based on the narrative allegations. The plaintiff alleges that the defendants’ accused products, such as the “prop turtle,” directly infringe claim 1 of the ’785 Patent (Compl. ¶¶38, 48).

The core of the infringement allegation is that the accused lures embody all the structural elements recited in claim 1. This includes having a simulated turtle body, head, legs, and tail, with attached fish hooks (Compl. ¶30). A screenshot of the accused "prop turtle" on Lunkerhunt's website shows a lure with a turtle-like body, head, and appendages (Compl. ¶39; Exs. 10-11). The plaintiff’s theory appears to be that the physical construction of this lure directly maps onto the limitations of claim 1.

A crucial point of the alleged infringement will be the structure of the tail. Claim 1 specifically requires that the "simulated turtle tail" must include both "a tail hook" (which is one of the apparatus's fish hooks) and "a simulated turtle tail covering attached to said tail hook" (Compl. ¶30). The infringement case will depend on demonstrating that the accused lures possess this specific two-part tail assembly.

  • Identified Points of Contention:
    • Structural Questions: A primary question will be whether the accused products’ tail assembly meets the specific limitations of claim 1. Does the lure’s tail contain a distinct component that can be identified as a "tail hook" and another distinct component that functions as a "simulated turtle tail covering" that is attached to that specific hook?
    • Scope Questions: The complaint alleges infringement by making, using, and selling the products (Compl. ¶38). Evidence will be required to establish that each named defendant (Lunkerhunt, BGDM, eBay, Google) performed at least one of these infringing acts within the United States.

V. Key Claim Terms for Construction

  • The Term: "a simulated turtle tail covering attached to said tail hook"
  • Context and Importance: This term appears in the final "wherein" clause of claim 1 and imposes a specific structural requirement on the tail assembly. The validity of the infringement allegation hinges on whether the accused product’s tail is merely a single piece of material with an embedded hook, or if it constitutes a "covering" that is "attached to" a "tail hook" as two conceptually separate, though connected, elements. Practitioners may focus on this term because it appears to be the most specific and potentially limiting element of the claim.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification does not provide an explicit definition. A party might argue that any soft plastic molded over the shank of a hook in the tail position meets the "covering attached to said tail hook" limitation, treating the molding process as the "attachment."
    • Evidence for a Narrower Interpretation: The claim language "attached to" suggests a separate action or connection between two components. Figure 3 of the patent depicts a "simulated leg covering" (22) being separate from a "leg hook" (20), and the specification describes a "simulated turtle tail covering 32" attached to a "tail hook 30" (’785 Patent, col. 3:39-41). This could support an interpretation that the "covering" and "hook" must be distinct articles that are joined together, rather than a single, integrally molded unit.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges induced infringement under 35 U.S.C. § 271(b), stating that defendants knowingly induced customers and retailers to use and sell the accused products by promoting them online and providing instructions or manuals (Compl. ¶¶52-53). Contributory infringement under § 271(c) is also pleaded based on the use and/or importation of the accused products (Compl. ¶54).
  • Willful Infringement: The complaint alleges willful infringement based on defendants’ continued infringement after receiving alleged actual notice of the ’785 Patent (Compl. ¶51). The complaint cites specific emails with dates of receipt for Lunkerhunt, BGDM, Google, and eBay, all occurring in November 2023, approximately one month before the suit was filed (Compl. ¶¶31-37).

VII. Analyst’s Conclusion: Key Questions for the Case

The resolution of this dispute will likely depend on the court's determination of two central questions:

  1. A core issue will be one of structural definition: Does the accused lure’s tail assembly meet the specific two-part requirement of claim 1, which calls for a "tail hook" and a separate "simulated turtle tail covering attached to said tail hook"? The case may turn on whether a single piece of molded plastic with an embedded hook satisfies this limitation.
  2. A key evidentiary question will concern the actions of the non-manufacturing defendants: What specific evidence demonstrates that platform defendants eBay and Google were "selling" the accused products themselves, as opposed to merely providing a third-party marketplace, and how does this activity map to the requirements for direct or indirect infringement?