DCT
8:20-cv-01538
Dominguez v. Barracuda Tackle LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Yunior Dominguez and Salt Addict, Inc. D/B/A The BallyHoop (Florida)
- Defendant: Barracuda Tackle LLC, Florida Fishing Tackle MFG. Co., Inc., and David Burton Young (Florida)
- Plaintiff’s Counsel: Calrie M. Marsh, P.A.
- Case Identification: 8:20-cv-01538, S.D. Fla., 04/04/2019
- Venue Allegations: Venue is alleged to be proper because Defendants are incorporated in Florida, conduct business in Miami-Dade County, and have allegedly committed acts of infringement within the Southern District of Florida.
- Core Dispute: Plaintiff alleges that Defendants’ collapsible bait net infringes a patent related to a collapsible hoop net for fishing.
- Technical Context: The technology concerns fishing equipment, specifically bait nets designed to be collapsible for improved portability and storage, addressing a common problem with traditional rigid nets.
- Key Procedural History: The complaint alleges that Defendants had pre-suit knowledge of the invention, citing their presence at a trade show where the invention was showcased, their purchase of the Plaintiff’s product a year before the patent issued, and their receipt of a cease-and-desist letter regarding the then-pending patent application. Notice of the issued patent was also allegedly provided on the day of issuance, months before the complaint was filed. These allegations form the basis for the claim of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2017-02-16 | '764 Patent Priority Date (Application Filing) |
| 2017-02 | Plaintiff's patent application filed |
| 2018-02 | Defendants allegedly purchase Plaintiff's product |
| 2018-03 | Defendants allegedly receive notice of pending patent application |
| 2019-01-01 | U.S. Patent No. 10,165,764 issues |
| 2019-01-01 | Defendants allegedly receive notice of issued '764 Patent |
| 2019-04-04 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Patent No. 10,165,764 (“Hoop Net”), issued January 1, 2019.
The Invention Explained
- Problem Addressed: The patent addresses the problem that traditional bait nets are often "cumbersome to store and transport" due to their rigid construction, leading to "rapid deterioration through sun exposure or tearing due to improper storage" (Compl. ¶10; ’764 Patent, col. 1:20-33).
- The Patented Solution: The invention is a collapsible hoop net built around a frame of "two semi-circular metal rods" which connect to form a complete ring (’764 Patent, col. 2:49-53). This two-part frame allows the net to be disconnected and "folded in half for easy storage" (’764 Patent, Abstract; col. 2:2-5). The net itself is attached to this frame, and stabilizing cords converge at the center to connect to a single draw cord for casting and retrieval (’764 Patent, col. 2:61-65).
- Technical Importance: This design purports to solve the storage and transport challenges of traditional nets "without sacrificing the strength and rigidity" needed for capturing bait (’764 Patent, col. 2:43-44).
Key Claims at a Glance
- The complaint asserts infringement of claims 1, 2, and 3 (Compl. ¶21).
- Independent Claim 1 contains the following essential elements:
- Two semi-circular tubular rods, each with a hollow first end and a second end with an attached "pin-like insert."
- The rods connect at two points by inserting the pin-like insert into the hollow end to form a ring.
- A mesh net is attached to the ring and extends into a conical receptacle.
- A specific net attachment mechanism involving being "interwoven" and using "two U shaped cords" held in place by "wax string."
- Four stabilizing cords attached to the ring that converge at the center.
- A draw cord attached to the stabilizing cords at their point of convergence.
- The complaint does not explicitly reserve the right to assert other claims, but this is common practice.
III. The Accused Instrumentality
Product Identification
- The accused product is identified as a "collapsible bait net" manufactured, marketed, and sold by the Defendants (Compl. ¶21).
Functionality and Market Context
- The complaint alleges that the accused product is the "same or similar product to the invention disclosed in the patent '764" (Compl. ¶12). It provides no specific technical details about the construction, connection mechanism, or net attachment method of the accused product. The complaint alleges that Plaintiffs and Defendants are direct competitors and that Defendants' activities have resulted in "undercutting sales, eroding price margins, undermining marketing efforts, and causing confusion among consumers" (Compl. ¶15). No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint alleges infringement in general terms without providing an element-by-element analysis or a claim chart exhibit. The following table maps the elements of asserted independent claim 1 to the complaint's general allegation that Defendants' "collapsible bait net" infringes.
’764 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a. two semicircular tubular rods, each having a hollow first end and a second end with a pin-like insert attached thereto, and the two semicircular rods are connected together at each end to form a ring by means of the pin-like insert of the second end is inserted into the hollow first end for a secure fit at two points of connection; | The complaint alleges that Defendants make, market, and sell a "collapsible bait net" that is covered by the claims of the patent. | ¶21 | col. 5:13-20 |
| b. a net made of mesh which at its top portion has the same diameter as the ring... and at its bottom portion extends into a conical shaped enclosed receptacle, forming a hoop; | The complaint alleges that Defendants make, market, and sell a "collapsible bait net" that is covered by the claims of the patent. | ¶21 | col. 5:21-24 |
| c. the net is attached to the ring... by means of: being interwoven... and having two U shaped cords... and each U shaped cord is fastened to the ring... and is held in place... by wax string that is wrapped around the tubular rod... | The complaint alleges that Defendants make, market, and sell a "collapsible bait net" that is covered by the claims of the patent. | ¶21 | col. 5:25-33 |
| d. four stabilizing cords, each separately attached to the ring... and which cords converge at the center of the ring and net assembly; | The complaint alleges that Defendants make, market, and sell a "collapsible bait net" that is covered by the claims of the patent. | ¶21 | col. 5:34-38 |
| e. a draw cord that is attached to the four stabilizing cords at their point of convergence by a fastening means. | The complaint alleges that Defendants make, market, and sell a "collapsible bait net" that is covered by the claims of the patent. | ¶21 | col. 5:39-41 |
- Identified Points of Contention:
- Evidentiary Questions: The complaint lacks specific factual allegations mapping the accused product's features to the claim elements. A central question for the court will be whether discovery reveals that the accused product in fact contains each of the specific features recited in claim 1.
- Technical Questions: The infringement analysis may turn on the precise mechanism of the accused product. For instance, does it utilize the claimed "pin-like insert" connection? More critically, does its net attachment system use the specific combination of being "interwoven," having "two U shaped cords," and a "wax string" barrier as required by limitation 1(c), or does it use a more common and distinct method?
V. Key Claim Terms for Construction
The Term: "pin-like insert"
Context and Importance: The nature of the connection between the two semi-circular rods is fundamental to the invention's collapsibility. The definition of "pin-like insert" will determine the scope of connection mechanisms covered by the patent. Practitioners may focus on this term because infringement will depend on whether the accused product's connector falls within the construed scope.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself is general and could be argued to encompass any male-type connector that inserts into a corresponding female-type hollow end to join the rods.
- Evidence for a Narrower Interpretation: The specification describes a specific embodiment, the "hollow pin-like extension 75," which has a "smaller diameter than the second end 70 from which it extends" (’764 Patent, col. 3:34-36). The specification also details an "indented groove or crease 72" on the rod which facilitates disconnection, suggesting the "pin-like insert" is part of this specific, detailed assembly (’764 Patent, col. 3:29-31, Figs. 2A, 2B).
The Term: "U shaped cords"
Context and Importance: This term appears in limitation 1(c), which recites a highly specific method for attaching the net to the frame. A narrow construction of this term could allow a competitor to design around the patent by using a different attachment method.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party might argue the term simply refers to any short piece of cordage looped in a 'U' shape to secure the net, a common configuration in netting.
- Evidence for a Narrower Interpretation: The specification provides a specific functional context, stating the "U shaped cord 42... creates an opening which serves to facilitate the point of connection and disconnection of the metal rods 10" (’764 Patent, col. 3:15-19). This suggests the term may be limited to cords that are specifically placed at the connection points and serve this dual function of net attachment and facilitating assembly/disassembly, rather than any generic U-shaped fastening cord.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendants induced infringement by "instructing, directing, and/or requiring others, including its customers... to practice" the claimed invention (Compl. ¶22). The pleading does not specify the means of instruction, such as product manuals or marketing materials.
- Willful Infringement: The complaint alleges that Defendants' infringement has been and continues to be willful (Compl. ¶28). The allegations are based on pre-suit knowledge of the invention dating back to at least February 2017 from a trade show (Compl. ¶12), the purchase of Plaintiff's product in February 2018 (Compl. ¶16), and receipt of a cease-and-desist letter regarding the pending patent application in March 2018 (Compl. ¶17). It further alleges Defendants were given notice of the issued patent on January 1, 2019 (Compl. ¶18).
VII. Analyst’s Conclusion: Key Questions for the Case
- A key evidentiary question will be one of technical correspondence: does the accused product, once analyzed in discovery, actually incorporate the highly specific net attachment structure required by claim 1(c)—including being "interwoven," having "two U shaped cords," and being held by a "wax string" barrier—or does it utilize a materially different and non-infringing design?
- A central issue will be one of definitional scope: can the term "pin-like insert," as described in the context of the patent's specific embodiment with its grooved release point, be construed broadly enough to read on the connection mechanism used in the Defendants' product, or is it limited to the precise structure disclosed?
- Given the detailed allegations of pre-suit notice, a critical question for the court will be the Defendants’ state of mind: if infringement is found, did the Defendants' alleged conduct after receiving multiple notices—including a cease-and-desist letter—constitute willful infringement, potentially leading to enhanced damages?