DCT
8:19-cv-01366
Roundabout Watercrafts LLC v. Ultraskiff LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Roundabout Watercrafts, LLC (Florida)
- Defendant: Ultraskiff, LLC (Texas)
- Plaintiff’s Counsel: Bennett, Jacobs & Adams, P.A.
- Case Identification: 8:19-cv-01366, M.D. Fla., 06/05/2019
- Venue Allegations: Venue is asserted based on the claim that a substantial part of the events giving rise to the action occurred in the district, and that one or more members of the Defendant reside within the district. The complaint also alleges Defendant sells products through retailers in the district.
- Core Dispute: Plaintiff seeks a declaratory judgment that its personal watercraft products do not infringe Defendant's patent related to the structural design of small, circular boats.
- Technical Context: The technology concerns the hull and deck design of single-occupant, circular personal watercraft, a niche market often used for fishing and recreation where stability is a primary design concern.
- Key Procedural History: The action was precipitated by a letter dated May 15, 2019, from Defendant to Plaintiff, which alleged infringement of the patent-in-suit and threatened litigation. This letter established the actual case or controversy required for a declaratory judgment action.
Case Timeline
| Date | Event |
|---|---|
| 2012-07-20 | ’487 Patent Priority Date |
| 2014-07-29 | ’487 Patent Issue Date |
| 2017-01-10 | Plaintiff's '073 Patent Issued (Not-in-suit) |
| 2019-05-15 | Defendant's letter threatening suit sent to Plaintiff |
| 2019-06-05 | Complaint for Declaratory Judgment Filed |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Patent No. 8,789,487, “Personal Watercraft,” issued July 29, 2014.
The Invention Explained
- Problem Addressed: The patent describes prior art circular watercraft as being "essentially glorified rafts" with decks located high above the vessel's center of gravity, creating a risk of capsizing, particularly when a user stands to cast a fishing line (’487 Patent, col. 1:17-23).
- The Patented Solution: The invention proposes a novel structure comprising a concave inner hull connected to a generally vertical outer hull, with a deck fixed to the lower edge of this inner hull. This arrangement is designed to place the user on a deck "well below the top edge of the vessel" (’487 Patent, col. 1:32-34). The interaction between the concave inner hull and the low-set deck directs the user's weight toward the craft's center and confines the primary flotation force to the space between the two hulls, thereby lowering the overall center of gravity and increasing stability (’487 Patent, col. 4:1-11). Figure 16 provides a cross-sectional view illustrating the relationship between the outer hull (1), inner hull (3), and deck (4).
- Technical Importance: The claimed design seeks to provide enhanced stability for a single-user circular watercraft, making it safer for activities like standing and fishing compared to prior designs (’487 Patent, col. 1:19-23).
Key Claims at a Glance
- The complaint seeks a declaratory judgment of non-infringement of "any valid claim of the ’487 Patent" (Compl. ¶19). The analysis focuses on the sole independent claim, Claim 1.
- Independent Claim 1:
- a) a generally vertical outer hull;
- b) a bottom member affixed to the lower edge of said outer hull and closing the watercraft from the encroachment of surrounding water into the vessel;
- c) a generally concave inner hull rigidly attached at its upper edge to the upper edge of said outer hull and extending downwardly toward said bottom; and
- d) a generally horizontal deck fixedly attached at its edges to the lower edge of said inner hull to form an enclosed space with said outer hull, inner hull, and bottom member;
- said deck having a size sufficient for the support of at least one person in a standing or reclining position and of sufficient strength and support to avoid undue bending from the weight of the user.
- The complaint does not explicitly reserve the right to address dependent claims, but its request covers all claims of the patent.
III. The Accused Instrumentality
Product Identification
- The complaint identifies the products at issue as Plaintiff's "Lightweight Personal Watercrafts" (Compl. ¶11).
Functionality and Market Context
- The complaint describes the products as "lightweight personal watercrafts" that Plaintiff manufactures and sells from its office in Ruskin, Florida (Compl. ¶11). The complaint focuses on what the products allegedly are not, asserting that they "significantly differ from the claims in the '487 Patent" (Compl. ¶15). The specific points of non-infringement alleged by the Plaintiff define the technical features at the heart of the dispute (Compl. ¶15.a-c).
No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
As this is an action for declaratory judgment of non-infringement, the following table summarizes the Plaintiff's contentions as to why its products do not meet the limitations of the asserted patent's independent claim.
’487 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Plaintiff's Contention of Non-Infringement | Complaint Citation | Patent Citation |
|---|---|---|---|
| c) a generally concave inner hull rigidly attached at its upper edge to the upper edge of said outer hull and extending downwardly toward said bottom | The Plaintiff's boat design "does not have a concave inner hull." | ¶15.a | col. 6:33-36 |
| d) a generally horizontal deck fixedly attached at its edges to the lower edge of said inner hull to form an enclosed space... | The Plaintiff's boat "does not include a deck fixedly attached at its edges to a lower edge of the inner hull." | ¶15.b | col. 6:36-39 |
| a) a generally vertical outer hull (as further limited in dependent claim 2 to be "generally circular in horizontal cross-section") | The Plaintiff's boat "does not contain a generally circular outer hull." | ¶15.c | col. 6:28; col. 6:49-50 |
- Identified Points of Contention:
- Scope Questions: The dispute raises fundamental questions about the scope of the patent's structural terms. For example, what degree and shape of curvature are required for an "inner hull" to be considered "generally concave"? The Plaintiff's denial suggests its product may have an inner wall with a different geometry.
- Technical Questions: A central technical question is the precise nature of the connection between the deck and the inner hull in the Plaintiff's product. The complaint's denial that the deck is "fixedly attached at its edges to a lower edge of the inner hull" (Compl. ¶15.b) puts the specific location and method of this structural joint directly at issue.
V. Key Claim Terms for Construction
The Term: "generally concave inner hull"
Context and Importance: This term is central to the patent's claimed solution for enhancing stability. Plaintiff's primary non-infringement argument is that its boat lacks this feature entirely (Compl. ¶15.a). Practitioners may focus on this term because its construction will determine whether a wide or narrow range of inner wall geometries fall within the claim's scope.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The use of the word "generally" suggests the term is not limited to a perfect or uniform curve. The specification describes the function of this hull as deterring a user from standing near the edge and directing their weight toward the center, a function that could potentially be achieved by various non-flat inner surfaces (’487 Patent, col. 4:1-5).
- Evidence for a Narrower Interpretation: The specification consistently uses the term "concave" and depicts a distinctly curved, bowl-like inner wall in figures such as the cross-section in Fig. 16. An argument could be made that the term requires a continuously curved surface, as opposed to an angular or multi-faceted one.
The Term: "deck fixedly attached at its edges to a lower edge of said inner hull"
Context and Importance: The location of this attachment point is critical to the claimed invention's method of lowering the vessel's center of gravity. Plaintiff denies its product has this specific attachment structure (Compl. ¶15.b). The interpretation of "lower edge" will be dispositive for infringement.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: One could argue that "lower edge" does not mean the single lowest point of the concave hull, but rather refers to the entire lower region or boundary of the inner hull to which the deck connects.
- Evidence for a Narrower Interpretation: The patent states the deck is "well below the top edge of the vessel" (’487 Patent, col. 1:33-34) and the claim language requires attachment to the "lower edge," which could be interpreted more restrictively as the terminal edge or lowest point of the inner hull before it would meet the bottom member. Figures 16 and 17 show the deck (4) attached to the inner hull (3) at its lowest extent.
VI. Other Allegations
- Indirect Infringement: The complaint does not contain allegations related to indirect infringement.
- Willful Infringement: While the Plaintiff's complaint does not allege willfulness, it notes that the Defendant's pre-suit letter threatened a suit that could result in "treble damages" (Compl. ¶6). This indicates that the Defendant has put the Plaintiff on notice, and any counterclaim for infringement filed by the Defendant may include an allegation of willful infringement based on knowledge imparted by that letter.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of "definitional scope": The case will likely turn on the court's construction of the key structural terms "generally concave inner hull" and "deck fixedly attached at its edges to a lower edge of said inner hull". The outcome of the non-infringement analysis depends almost entirely on whether the physical structure of Plaintiff's watercraft falls within the boundaries of these definitions.
- A key evidentiary question will be one of "structural reality": Assuming the claim terms are construed, the central factual dispute will be a direct comparison of the accused product's physical geometry and assembly to the claim limitations. The complaint's denials are conclusory, and discovery will be required to establish the specific design of the Plaintiff's "Lightweight Personal Watercrafts" to resolve whether a factual mismatch exists.