DCT

1:17-cv-02527

Heil Co v. McNeilus Companies Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:17-cv-02527, N.D. Ga., 07/05/2017
  • Venue Allegations: Venue is based on allegations that Defendant McNeilus maintains a regular and established place of business within the Northern District of Georgia and has committed acts of patent infringement in the district.
  • Core Dispute: Plaintiff alleges that Defendant’s refuse collection vehicles, including their integrated compressed natural gas (CNG) systems, joystick controls, and automated side-loading containers, infringe six patents related to waste vehicle technology.
  • Technical Context: The technologies at issue concern efficiency, safety, and design improvements for refuse collection trucks, a capital-intensive industry where operational advantages are significant.
  • Key Procedural History: The complaint alleges that Defendant had pre-suit knowledge of the ’569 patent and its underlying application via correspondence in 2015 and early 2017, as well as a prior lawsuit filed in Alabama in March 2017. It further alleges Defendant was aware of the patents related to the Curotto-Can technology from business discussions regarding a potential merger or acquisition that occurred prior to 2013.

Case Timeline

Date Event
2000-01-01 Production of the Curotto-Can automated carry can began.
2003-10-16 Earliest Priority Date for ’890, ’121, ’427, and ’549 Patents.
2007-05-01 U.S. Patent No. 7,210,890 Issued.
2009-06-30 U.S. Patent No. 7,553,121 Issued.
2012-10-09 Priority Date for ’128 Patent.
2013-01-01 The Curotto-Can Company was acquired by The Heil Co.
2013-06-18 Priority Date for ’569 Patent.
2013-07-30 U.S. Patent No. 8,496,427 Issued.
2015-10-06 Plaintiff's counsel allegedly put Defendant on notice of the publication that would become the ’569 Patent.
2016-01-01 Defendant announced program to sell "refurbished" Curotto-Can automated carry cans.
2016-07-26 U.S. Patent No. 9,399,549 Issued.
2016-08-30 U.S. Patent No. 9,428,128 Issued.
2017-01-03 U.S. Patent No. 9,533,569 Issued.
2017-02-03 Plaintiff's counsel allegedly identified the issued ’569 Patent to Defendant.
2017-03-23 Plaintiff filed a related lawsuit in Alabama asserting the ’569 Patent.
2017-07-05 Complaint filed in the present case.

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

U.S. Patent No. 9,533,569 - “Tailgate with Structurally Integrated CNG System,” issued January 3, 2017.

The Invention Explained

  • Problem Addressed: Conventional methods for equipping refuse trucks with compressed natural gas (CNG) fuel systems involved mounting tanks on the vehicle's roof or chassis. The patent's background describes these approaches as problematic, citing exposure to damage from overhead obstacles, a high center of gravity, and consumption of valuable chassis space (’569 Patent, col. 1:24-41). Tailgate-mounted "PODs" were also seen as heavy and aesthetically undesirable (’569 Patent, col. 1:42-55).
  • The Patented Solution: The invention integrates CNG tanks directly into the structure of the vehicle's tailgate. The tanks are arranged to follow the natural arc of the tailgate, which is claimed to lower the center of gravity, reduce weight by utilizing existing structure, and create a more streamlined aesthetic appearance when covered (’569 Patent, Abstract; col. 2:4-16).
  • Technical Importance: This design approach sought to resolve the trade-offs between fuel capacity, vehicle stability, structural integrity, and operational clearance inherent in prior CNG systems for refuse vehicles (’569 Patent, col. 1:56-61).

Key Claims at a Glance

  • The complaint asserts independent claim 1 and dependent claims 2, 4-6, 8-11, 13, 14, 16, and 17 (Compl. ¶63).
  • Essential elements of independent claim 1 include (Compl. ¶65):
    • A tailgate for a refuse vehicle comprising:
    • a frame having an arcuate portion, the frame extending between a top terminal end of the tailgate and a bottom terminal end of the tailgate;
    • a plurality of compressed natural gas tanks coupled with the frame, the plurality of compressed natural gas tanks are positioned onto the frame from the top of the frame to the bottom of the frame such that the plurality of compressed natural gas tanks are aligned one after the other in a single file pattern so that the single file pattern of the plurality of compressed natural gas tanks define an arcuate line along the frame; and
    • a cover covering the frame.

U.S. Patent No. 9,428,128 - “Externally Controlled Switch Mechanism,” issued August 30, 2016.

The Invention Explained

  • Problem Addressed: Operators of refuse vehicles often must control multiple, distinct hydraulic systems, such as the main front-loading forks and a separate automated can loader. The patent background notes that using separate controls for these functions can be inefficient, requiring the operator to change hand positions during a collection cycle (’128 Patent, col. 1:27-44).
  • The Patented Solution: The patent describes a control system where a single primary controller, such as a joystick, can be used to operate multiple different mechanisms. An operator uses a separate plurality of switches to "toggle" or select which hydraulic system the joystick currently controls, allowing for seamless switching between functions (e.g., from operating the main forks to operating an automated can) without moving hands from the primary controller (’128 Patent, Abstract; col. 2:43-51).
  • Technical Importance: This invention aimed to improve operator efficiency and ergonomics by consolidating the control of complex, multi-function refuse vehicles into a unified, mode-switching interface (’128 Patent, col. 1:41-44).

Key Claims at a Glance

  • The complaint asserts claims 1-18 (Compl. ¶78).
  • Essential elements of independent claim 1 include (Compl. ¶80):
    • A control mechanism for a refuse vehicle comprising:
    • a first control valve that operates a first hydraulically controlled mechanism;
    • a second control valve that operates a second hydraulically controlled mechanism;
    • a plurality of switches that generates a valve select signal and a mode signal;
    • a pneumatic control mechanism that selectively controls the first control valve and the second control valve based on the valve select signal and the mode signal;
    • wherein the plurality of switches are actuated by an operator of the refuse vehicle while the operator is operating the pneumatic control mechanism.

U.S. Patent No. 7,210,890 - “Front-loadable refuse container having side-loading robotic arm with motors and other mass mounted at rear of container...,” issued May 1, 2007.

  • Technology Synopsis: The patent addresses mechanical stresses created when a side-loading robotic arm is mounted to the front of an intermediate refuse container used on front-loading trucks. The solution involves mounting a major portion of the robotic arm's mass (e.g., motors, hydraulics) to the rear of the container, closer to the vehicle's lifting forks, which is described as reducing cantilever forces and vibrational stress on the vehicle and its lift arms (’890 Patent, Abstract; col. 6:20-41).
  • Asserted Claims: Independent claim 1 is asserted (Compl. ¶95).
  • Accused Features: Defendant's automated carry cans are alleged to embody the claimed combination by having a side-loading robotic arm with a major portion of its mass mounted rearward of the container's rearmost refuse-containing wall (Compl. ¶¶96, 98).

U.S. Patent No. 7,553,121 - “Front-loadable refuse container having side-loading robotic arm with motors and other mass mounted at rear of container...,” issued June 30, 2009.

  • Technology Synopsis: This patent claims a method for reducing the transfer of mechanical vibrations between a front-loading vehicle and an intermediate container/robotic arm combination. The method comprises the steps of situating a majority of the robotic arm's mass rearward of the container's rearmost wall and providing clearance to prevent collision with the vehicle during operation (’121 Patent, Abstract).
  • Asserted Claims: Independent claims 1 and 6 are asserted (Compl. ¶¶111, 118).
  • Accused Features: The complaint alleges that Defendant's manufacturing and its customers' use of the accused automated carry cans practice the patented method for reducing vibrations (Compl. ¶¶112, 119).

U.S. Patent No. 8,496,427 - “Front-loadable refuse container having side-loading robotic arm with motors and other mass mounted at rear of container...,” issued July 30, 2013.

  • Technology Synopsis: This patent claims a method for assembling a modular combination of a robotic arm and an intermediate container for use with a front-loading vehicle. The claimed method involves providing the robotic arm with a "major-mass portion" that is modularly positionable rearward of the container and can detachably interface with the vehicle to receive power and control signals (’427 Patent, Abstract).
  • Asserted Claims: Independent claim 1 is asserted (Compl. ¶133).
  • Accused Features: Defendant's activities of making, using, selling, and offering "refurbished" or rental automated carry cans are alleged to constitute the claimed method of assembling the modular structures (Compl. ¶¶53, 134, 136-137).

U.S. Patent No. 9,399,549 - “Front-loadable refuse container having side-loading robotic arm with motors and other mass mounted at rear of container...,” issued July 26, 2016.

  • Technology Synopsis: This patent claims a fork-liftable combination where a portion of the side-loading arm is attached to the rearmost wall of the container and includes a slide mechanism to enable its movement. A key feature is that the slide mechanism and the arm portion are located between the refuse container and the vehicle when the combination is supported by the vehicle (’549 Patent, Abstract).
  • Asserted Claims: Independent claim 1 is asserted (Compl. ¶148).
  • Accused Features: The accused automated carry cans are alleged to include a slide mechanism for the robotic arm that is located between the can and the vehicle during use (Compl. ¶¶149, 152).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are (1) Defendant’s NGEN Compressed Natural Gas (CNG) System, (2) Defendant’s Meridian line of front-loading refuse trucks equipped with "toggle joysticks," and (3) Defendant's automated carry cans, which are offered as new, "refurbished," or "remanufactured" products (Compl. ¶¶24, 29, 35).

Functionality and Market Context

  • The NGEN CNG System is a fuel system for refuse vehicles where the CNG tanks are structurally integrated into the vehicle's tailgate (Compl. ¶24).
  • The Meridian front-loading vehicles are equipped with a single joystick control that allows an operator to "toggle" between controlling the vehicle's main lifting arms and forks and controlling "automated container functions" (Compl. ¶29). An image provided in the complaint shows this joystick, which features buttons for "OPEN," "CLOSE," and "RESI MODE" (Compl. p. 11).
  • The accused automated carry cans are front-loadable containers equipped with a side-loading robotic arm for residential waste collection (Compl. ¶32). The complaint alleges Defendant markets a program to "remanufacture" these cans, which involves "major refurbishments that improve the structure of the can," including a reinforced back wall and a new air locking system (Compl. ¶¶35-36). A promotional image describes these as including "new cylinders, new can, and a number of remanufactured weldments" (Compl. p. 15).

IV. Analysis of Infringement Allegations

’569 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A tailgate for a refuse vehicle comprising: a frame having an arcuate portion, the frame extending between a top terminal end of the tailgate and a bottom terminal end of the tailgate; The accused NGEN CNG System allegedly includes a frame with an arcuate portion that extends between the top and bottom of the tailgate (Compl. p. 26). ¶67 col. 2:54-57
a plurality of compressed natural gas tanks coupled with the frame... aligned one after the other in a single file pattern so that the single file pattern of the plurality of compressed natural gas tanks define an arcuate line along the frame from the top of the tailgate to the bottom... The NGEN CNG System allegedly includes multiple natural gas tanks coupled to the frame, which are aligned in a single file pattern that defines an arcuate line (Compl. p. 26). ¶67 col. 2:58-67
and a cover covering the frame. The NGEN CNG System allegedly includes a cover that covers the frame and tanks, as depicted in a labeled photograph provided in the complaint (Compl. p. 26). ¶67 col. 3:5-6

’128 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a first control valve that operates a first hydraulically controlled mechanism; a second control valve that operates a second hydraulically controlled mechanism; The accused Meridian refuse trucks allegedly include control valves that operate at least two distinct hydraulically controlled mechanisms, such as the arms, forks, and/or container devices. ¶83 col. 3:4-7
a plurality of switches that generates a valve select signal and a mode signal; The accused toggle joystick allegedly includes multiple switches located on the joystick that generate valve select and mode signals, as depicted in a photograph provided in the complaint (Compl. p. 32). ¶84 col. 3:8-10
pneumatic control mechanism that selectively controls the first control valve and the second control valve based on the valve select signal and the mode signal; The joystick itself is alleged to be at least part of a pneumatic control mechanism because its maneuvering causes hydraulic operation of other components. ¶84 col. 3:11-14
wherein the plurality of switches are actuated by an operator of the refuse vehicle while the operator is operating the pneumatic control mechanism; The switches are located on the joystick and are allegedly actuatable by a user while operating the joystick to select the mode of operation. ¶84 col. 3:15-18
and the plurality of switches generates a first valve control signal and a first mode signal when the operator actuates the plurality of switches to a first position. Actuating the joystick switches to a first position allegedly generates the required signals. ¶81 col. 3:19-22

Identified Points of Contention

  • Scope Questions: The infringement analysis for the ’128 patent may raise the question of whether an electronically-actuated joystick that controls hydraulic systems falls within the scope of a "pneumatic control mechanism." The complaint's assertion that the joystick is pneumatic "because maneuvering of the joystick causes hydraulic operation" (Compl. ¶84) suggests a potential mismatch between the accused technology's actual operation and the specific type of control system recited in the claim.
  • Technical Questions: For the ’569 patent, a potential point of dispute could be whether the accused tanks are arranged in a "single file pattern." The complaint provides a labeled photograph purporting to show this feature (Compl. p. 26), but the precise configuration and alignment of the tanks in the accused product relative to the patent's teachings may be contested.

V. Key Claim Terms for Construction

  • For the ’569 Patent:

    • The Term: "single file pattern"
    • Context and Importance: The infringement reading turns on whether the accused product's tank arrangement meets this limitation. Defendant may argue its tanks are clustered, staggered, or otherwise configured in a manner that is not a "single file pattern," thereby avoiding infringement.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The patent specification describes the tanks as being "aligned one after the other in a single file pattern" (’569 Patent, col. 2:62-63), language which could be interpreted to cover any generally sequential arrangement.
      • Evidence for a Narrower Interpretation: Claim 1 also requires that this pattern "define an arcuate line along the frame." Figures in the patent depict a specific, linear, end-to-end arrangement of cylindrical tanks following a curve, which could be used to argue for a narrower construction limited to such a configuration (’569 Patent, Fig. 4).

  • For the ’128 Patent:

    • The Term: "pneumatic control mechanism"
    • Context and Importance: This term appears central to the dispute. If the accused joystick operates purely electronically to send signals to hydraulic or pneumatic valves, rather than being a pneumatic device itself, there may be a strong non-infringement argument. Practitioners may focus on this term because the complaint's basis for satisfying this element—that maneuvering the joystick "causes hydraulic operation" (Compl. ¶84)—conflates the output with the nature of the controller itself.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: A party could argue that the term should be construed broadly to cover a control system that includes pneumatic components, even if the operator's interface is electronic. The claim recites a "control mechanism for a refuse vehicle comprising" the pneumatic control mechanism among other parts.
      • Evidence for a Narrower Interpretation: The patent's abstract recites a "pneumatic control mechanism that selectively controls the first control valve and the second control valve," suggesting the controlling element itself is pneumatic. The detailed description also refers to an "air-piloted hydraulic or electrically operated control valve" (’128 Patent, col. 4:59-61), which may suggest the pneumatic element is distinct from an electronic one.

VI. Other Allegations

Indirect Infringement

The complaint alleges both contributory and induced infringement for all asserted patents. For the ’569 and ’128 patents, it alleges Defendant encourages and instructs others to use the infringing systems (Compl. ¶¶69, 86). For the Curotto-Can patents, it alleges Defendant encourages infringement by selling the automated carry cans and instructing customers on their use, knowing they are adapted for an infringing purpose (Compl. ¶¶102, 124, 138, 155).

Willful Infringement

Willfulness is alleged for all asserted patents. For the ’569 patent and the Curotto-Can patents, willfulness is based on alleged pre-suit knowledge from correspondence and prior business dealings (Compl. ¶¶73, 104, 126, 140, 157). For the ’128 patent, the allegation of knowledge is based on the filing of the complaint itself, suggesting a theory of post-suit willfulness (Compl. ¶¶88, 90).

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

  • A key evidentiary question will be one of technical operation: does the accused joystick for the Meridian truck function as a "pneumatic control mechanism" as claimed in the ’128 patent, or does its actual electronic operation create a fundamental mismatch with the claimed invention?
  • A core issue for the Curotto-Can patents will be one of pre-suit knowledge: what evidence exists to support the allegation that Defendant was aware of these patents from acquisition discussions prior to 2013, and how will that awareness impact the claims for willful infringement?
  • The case may also turn on a question of reconstruction versus repair: do Defendant’s activities in its "remanufacturing" program for automated carry cans, which allegedly involve replacing core components like the can and cylinders, cross the line from permissible repair to infringing reconstruction under patent law?