DCT
0:21-cv-61035
Cayago Americas Inc v. Heinen
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Cayago Tec GmbH (Germany) and Cayago Americas, Inc. (Florida)
- Defendant: I-Aqua USA LLC (Florida), Luxury Water Toys, LLC (Florida), and Rene Heinen (Florida)
- Plaintiff’s Counsel: Assouline & Berlowe, P.A.
- Case Identification: 0:21-cv-61035, S.D. Fla., 05/17/2021
- Venue Allegations: Venue is alleged to be proper as Defendants are Florida residents or registered companies that have committed tortious acts (patent infringement) in the district by using, importing, offering to sell, and selling the accused products within Florida.
- Core Dispute: Plaintiff alleges that Defendants’ SeaDart line of personal watercraft infringes two patents related to the construction of rechargeable battery units and water-cooled electric motors for such craft.
- Technical Context: The lawsuit concerns the high-performance personal watercraft market, where power density, battery life, and thermal management are critical technical challenges for electric propulsion systems.
- Key Procedural History: The complaint alleges a history of infringement by the Chinese manufacturer of the accused products, iAqua, including a 2019 U.S. lawsuit that resulted in a settlement and permanent injunction against a prior distributor. It also alleges that individual defendant Rene Heinen is a former employee of Plaintiff Cayago Americas and that his company, Luxury Water Toys, was a dealer for Plaintiff's products before allegedly beginning to sell the competing, infringing SeaDart products.
Case Timeline
| Date | Event |
|---|---|
| 2004-10-12 | ’814 Patent Priority Date |
| 2011-06-21 | ’814 Patent Issue Date |
| 2013-01-18 | ’019 Patent Priority Date |
| 2017-01-26 | Defendant Heinen begins employment with Plaintiff Cayago Americas |
| 2017-03-06 | Defendant Luxury Water Toys is formed |
| 2017-03-28 | Luxury Water Toys and Cayago Americas enter a dealer agreement |
| 2017-09-26 | ’019 Patent Issue Date |
| 2018-05-10 | Defendant Heinen’s employment with Cayago Americas ends |
| Late 2019 | Parties settle a prior lawsuit against a different distributor of iAqua products |
| 2021-01-04 | Dealer Agreement between Luxury Water Toys and Cayago Americas is renewed |
| 2021-02-02 | Defendant Heinen forms Defendant i-Aqua USA |
| 2021-05-17 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,774,019 - Rechargeable Battery Unit for a Watercraft (issued Sep. 26, 2017)
The Invention Explained
- Problem Addressed: The patent addresses the need to create compact, high-power-density battery units for watercraft, where installation space is limited and high motor power is required ( Compl. ¶36; ’019 Patent, col. 1:39-49).
- The Patented Solution: The invention is a modular battery system composed of individual "rechargeable battery cells." Each cell contains multiple batteries held between two holders that grip the battery pole ends. These standardized cells can then be lined up and electrically connected in series (or "cascaded") to achieve a desired voltage and energy capacity within a compact, often cylindrical, form factor ( Compl. ¶36; ’019 Patent, Abstract & Fig. 2).
- Technical Importance: This modular design allows for the flexible construction of powerful and robust battery packs tailored to the specific space and power constraints of different electric watercraft models (’019 Patent, col. 1:45-49).
Key Claims at a Glance
- The complaint asserts at least independent Claim 1 (Compl. ¶47).
- Claim 1 requires:
- A holding arrangement with two holders, each having receptacles.
- Multiple rechargeable batteries connected by the holding arrangement to form a "rechargeable battery cell."
- At least one pole connector to electrically couple the batteries.
- A configuration where two or more battery cells are lined up and electrically coupled.
- A structure where the two holders of each cell are separated by a "clearance distance," with each holder receiving one of the two poles of each battery.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 7,963,814 - Electric motor-driven water craft, which is cooled by the surrounding water (issued June 21, 2011)
The Invention Explained
- Problem Addressed: The patent identifies that prior art electric watercraft were often complex, heavy, and limited in performance due to inefficient cooling of the electric motor and batteries, which generate significant heat at high power outputs (Compl. ¶38; ’814 Patent, col. 1:26-34).
- The Patented Solution: The invention proposes placing the electric motor and its housing directly in the path of the water that propels the craft. It describes a "flow channel" where a screw (propeller) moves water, and key heat-generating components like the motor's stator are placed in "heat-conducting contact" with a housing that is at least partially situated in this flow channel. This uses the constantly moving ambient water as an efficient, unlimited coolant (Compl. ¶38; ’814 Patent, Abstract & Fig. 1).
- Technical Importance: This direct water-cooling method enables the construction of more powerful and efficient electric watercraft by effectively managing the thermal load, a primary constraint on electric motor performance (’814 Patent, col. 1:40-44).
Key Claims at a Glance
- The complaint asserts at least independent Claim 19 (Compl. ¶63).
- Claim 19 requires:
- A motor-driven watercraft with a body, a flow channel, a screw, an electric motor, batteries, and a control device, with these components at least partially housed in the flow channel.
- An electric motor with an internal rotor.
- A stator in "heat-conducting contact" with a "receiver housing" by way of a "heat-conducting unit."
- The receiver housing is made at least partially of a heat-conductive material.
- The receiver housing is arranged at least partially in the flow channel.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
- The complaint identifies the accused products as watercraft vehicles sold under various models, including the "SeaDart Ace watercraft" (collectively, "SeaDart") (Compl. ¶40).
Functionality and Market Context
- The complaint alleges the SeaDart is a watercraft that uses rechargeable batteries and competes directly with the Plaintiffs' SEABOB® series of water scooters (Compl. ¶¶31, 40). The complaint asserts that the manufacturer of the SeaDart, iAqua, is based in China and uses local distributors, such as the Defendants, to market its products in various regions, including the United States (Compl. ¶¶18, 22). No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint alleges infringement on information and belief but does not provide specific factual allegations mapping the features of the accused SeaDart watercraft to the elements of the asserted claims. The infringement allegations consist of reciting the claim language and asserting that the SeaDart product contains the claimed features.
’019 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a holding arrangement including two holders, each holder having a plurality of receptacles | The complaint alleges the SeaDart watercraft contains this feature without providing specific details of its battery construction. | ¶¶44, 47 | col. 4:62-65 |
| a plurality of rechargeable batteries connected to one another by the holding arrangement to form a rechargeable battery cell, each of the rechargeable batteries having two poles | The complaint alleges the SeaDart watercraft contains this feature without providing specific details of its battery construction. | ¶¶44, 47 | col. 2:51-55 |
| at least one pole connector electrically coupling at least some of the rechargeable batteries to one another | The complaint alleges the SeaDart watercraft contains this feature without providing specific details of its battery construction. | ¶¶44, 47 | col. 4:14-17 |
| wherein two or more rechargeable battery cells are lined up with one another and electrically coupled to one another | The complaint alleges the SeaDart watercraft contains this feature without providing specific details of its battery construction. | ¶¶44, 47 | col. 2:31-33 |
| wherein the two holders of the holding arrangement of each rechargeable battery cell are separated by a clearance distance, each holder receiving a respective one of the two poles of each rechargeable battery | The complaint alleges the SeaDart watercraft contains this feature without providing specific details of its battery construction. | ¶¶44, 47 | col. 2:14-17 |
- Identified Points of Contention:
- Scope Questions: A central question will be whether the SeaDart's battery assembly can be shown to meet the specific structural requirements of a "holding arrangement" with "two holders" separated by a "clearance distance," as opposed to other known methods of assembling battery packs.
- Technical Questions: The case will require evidence, likely obtained through discovery, of the precise internal construction of the SeaDart's battery unit to determine if it practices the claimed modular, cell-based architecture.
’814 Patent Infringement Allegations
| Claim Element (from Independent Claim 19) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| the electric motor (3) having an internal rotor | The complaint alleges the SeaDart watercraft contains this feature without providing specific details of its motor construction. | ¶¶60, 63 | col. 5:4-5 |
| a stator (21) in heat-conducting contact with a receiver housing (3.5) of the electric motor (3) by a heat-conducting unit (22) | The complaint alleges the SeaDart watercraft contains this feature without providing specific details of its motor construction. | ¶¶60, 63 | col. 5:26-28 |
| in an area adjacent the heat-conducting unit (22) the receiver housing (3.5) formed at least partially of a material capable of conducting heat | The complaint alleges the SeaDart watercraft contains this feature without providing specific details of its motor construction. | ¶¶60, 63 | col. 2:32-34 |
| and the receiver housing (3.5) arranged at least partially in the flow channel (8) | The complaint alleges the SeaDart watercraft contains this feature without providing specific details of its motor construction. | ¶¶60, 63 | col. 2:34-36 |
- Identified Points of Contention:
- Scope Questions: The interpretation of "heat-conducting contact" will be critical. The question will be whether this requires a specific, highly efficient thermal interface (like the "casting compound" disclosed in an embodiment) or if any form of thermal connection suffices.
- Technical Questions: An evidentiary dispute may arise over whether the SeaDart’s motor housing is truly "in the flow channel" as claimed, and what degree of thermal contact actually exists between its stator and housing.
V. Key Claim Terms for Construction
For the ’019 Patent:
- The Term: "holding arrangement including two holders" (Claim 1)
- Context and Importance: This term defines the core structure of the patented modular battery cell. The infringement analysis will depend on whether the SeaDart's battery assembly method falls within the scope of this term. Practitioners may focus on this term because its structural limitations appear to be a primary point of novelty.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent states the object is to provide "compact positioning and interconnection of a plurality of individual rechargeable batteries" (’019 Patent, col. 1:50-52), which might support interpreting the term to cover any structure that achieves this goal.
- Evidence for a Narrower Interpretation: The specification consistently describes and illustrates a specific embodiment where the holders (20) are disc-shaped components with concentric rings of receptacles for cylindrical batteries (’019 Patent, Fig. 1; col. 4:62-65). A party could argue the term is limited to this disclosed structure or a close equivalent.
For the ’814 Patent:
- The Term: "heat-conducting contact" (Claim 19)
- Context and Importance: This term is central to the invention’s cooling mechanism. Whether the SeaDart infringes will hinge on the nature of the thermal connection between its motor stator and its housing.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent's summary states the goal is to provide a motor-driven watercraft with a "high degree of efficiency" by transferring heat to the water (’814 Patent, col. 1:40-44), which could support a functional definition covering any contact sufficient to cool the motor.
- Evidence for a Narrower Interpretation: The specification discloses a specific "heat-conducting unit (22) made of a casting compound" that connects the stator to the housing (’814 Patent, col. 5:26-28). A party may argue that "heat-conducting contact" requires a direct, material-to-material interface of this type, rather than merely proximate placement.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendants induced infringement by "direct[ing] their manufacturers, customers, and users to infringe" and contributed to infringement by providing the SeaDart watercraft (Compl. ¶¶ 50-53, 66-69). The complaint does not plead specific facts, such as references to user manuals or marketing materials, to support the element of intent.
- Willful Infringement: The complaint alleges that Defendants’ infringement was willful and deliberate (Compl. ¶¶ 49, 65). The allegations are factually supported by claims that Defendants had pre-suit knowledge of the patents, based on a 2019 lawsuit and settlement involving the same product manufacturer (iAqua) and at least one of the same patents (’019 Patent) (Compl. ¶¶ 19-22). The complaint further alleges that individual defendant Rene Heinen was a former employee of Plaintiff and a dealer for its products, suggesting direct knowledge of Plaintiff's patented technology (Compl. ¶¶ 25-29).
VII. Analyst’s Conclusion: Key Questions for the Case
- An Evidentiary Question of Technical Fact: Given the complaint’s lack of specific technical details about the accused product, a central issue will be what discovery reveals about the internal architecture of the SeaDart watercraft. The case will depend heavily on whether the physical evidence shows a battery assembly matching the ’019 Patent's "holding arrangement" and a motor cooling system meeting the ’814 Patent's "heat-conducting contact" and "flow channel" limitations.
- A Legal Question of Claim Scope: The dispute will likely focus on the proper construction of key structural terms. A core issue will be one of definitional scope: can the term "holding arrangement," as disclosed in the ’019 Patent, be construed to cover the specific battery assembly in the accused device? Similarly, can the ’814 Patent's "heat-conducting contact" be interpreted to read on the SeaDart's thermal management design?
- A Factual Question of Intent: The extensive allegations regarding prior litigation, the prior settlement involving the ’019 Patent, and the individual defendant's history as a former employee and dealer create a significant question regarding willfulness. A key issue for trial will be whether Defendants acted with objective recklessness in the face of a known risk of infringing patents they were allegedly aware of.